Appellate Victory for PerkinElmer, NTD Laboratories Ends Decade-Long Patent Dispute
On Tuesday, Nov. 20, Justices William C. Bryson, Kathleen M. O’Malley and Evan J. Wallach of the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment in favor of Ropes & Gray clients PerkinElmer, Inc. and NTD Laboratories Inc., finding U.S. Patent No. 6,573,103, of Intema Ltd., entitled “Antenatal Screening For Down’s syndrome,” invalid for failing to claim patent-eligible subject matter under 35 U.S.C. § 101. As a result, the court determined that PerkinElmer and NTD cannot infringe the ‘103 patent as a matter of law. The patent purports broadly to cover all prenatal screening methodologies that employ data from the first and second trimesters of pregnancy to determine a risk that the fetus has Down syndrome. The Nov. 20 order concludes a decade-long dispute between PerkinElmer and Intema.
While others in the prenatal screening took licenses to the patent, PerkinElmer, a company focused on bringing earlier prenatal screening results to patients in the first trimester of pregnancy, declined to accept the licensing demands of the inventor. In 2009, following unsuccessful negotiations, PerkinElmer turned to Ropes & Gray to seek a declaratory judgment that the patent was invalid, and Intema sued PerkinElmer for patent infringement.
In August 2011, Judge Dennis Saylor IV of the U.S. District Court for the District of Massachusetts granted PerkinElmer’s motion for summary judgment finding the asserted claims invalid as anticipated and obvious over the prior art. The District Court, however, denied PerkinElmer’s motion for summary judgment seeking a declaration that the patents were invalid under § 101. On appeal, PerkinElmer argued that the District Court’s judgment should be affirmed. Alternatively, PerkinElmer argued that the claims should be found invalid under § 101.
In its Nov. 20 order, the Federal Circuit did not address the District Court’s finding of anticipation and obviousness. Instead, the court found that the asserted claims, directed to methods of screening for an increased risk of Down syndrome, are directed to unpatentable mental processes and natural laws. The court further found that the steps of “measuring” screening markers and “determining” a risk of Down syndrome were insufficient to render the claims patent-eligible – a finding the court found was supported by the patent’s failure to satisfy the machine-or-transformation test.