Illumina, Inc. v. Natera, Inc., No. 3:2018cv01662 - Document 41 (N.D. Cal. 2018)

Court Description: ORDER DENYING MOTION TO DISMISS 24 . (Illston, Susan) (Filed on 6/26/2018)
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ILLUMINA, INC., Plaintiff, 8 ORDER DENYING MOTION TO DISMISS 9 v. 10 NATERA, INC., Re: Dkt. No. 24 Defendant. 11 United States District Court Northern District of California Case No. 18-cv-01662-SI 12 13 Before the Court is defendant Natera’s motion to dismiss plaintiff Illumina’s complaint. 14 Dkt. No. 24. After hearing argument and considering the parties’ materials, the Court rules as 15 follows. 16 BACKGROUND 17 18 This patent infringement action concerns U.S. Patent No. 9,493,831 (“the ’831 patent”). 19 Plaintiff Illumina develops, manufactures, and markets life science tools and integrated systems 20 for large-scale analysis of DNA. Case No. 15-cv-2216, Dkt. No. 1 at ¶ 4. Defendant Natera 21 provides non-invasive diagnostic testing for determining fetal chromosomal abnormalities. 22 Compl. at ¶ 3. 23 The ’831 patent, titled “Methods for Fetal Abnormality Detection,” is directed to methods 24 for “selectively enriching non-random polynucleotide sequences,” “generating libraries of 25 sequences,” and “detect[ing] fetal aneuploidy.” See U.S. Patent No. 9,493,831, at [54], [57] (filed 26 Apr. 2, 2015). The patent claims priority to a provisional application filed in January 2010 and 27 issued to Illumina in November 2016. Dkt. No. 24 at 3. Illumina asserts the ’831 patent is a 28 continuation of the ’430 patent, and improves the method for the creation of synthetic DNA 1 libraries for aneuploidy analysis. Dkt. No. 32 at 1. Specifically, the ’831 patent “allows one to 2 prepare DNA libraries targeting non-random DNA sequences that facilitate aneuploidy 3 detection… that expedite downstream analysis of the DNA library.” Dkt. No. 32. Claim 1 of the 4 ’831 patent is representative of the method and appears as follows: 5 A method for preparing a sequencing library from a maternal blood sample, the method comprising: 6 7 a. obtaining a maternal blood sample comprising fetal and maternal cell-free DNA; 8 9 10 United States District Court Northern District of California 11 b. selectively enriching a plurality of non-random polynucleotide sequences of genomic DNA from said fetal and maternal cell-free DNA to generate a library of enriched non-random polynucleotide sequences, wherein said plurality of non-random polynucleotide sequences comprises at least 100 different nonrandom polynucleotide sequences selected from a chromosome tested for being aneuploid, said enriching comprising: 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 (i) a first amplification step to generate a plurality of first reaction products, said amplification comprising at least 100 first primers configured to amplify at least 100 different non-random polynucleotide sequences; (ii) a second amplification step to generate a second reaction product, said amplification comprising a second set of primers comprising sequences contained in the first reaction products; and (iii) a third amplification step to generate a third reaction product comprising said library of enriched non-random polynucleotide sequences, said amplification comprising a third set of primers comprising sequences contained in the second reaction products; wherein at least one primer of at least one of the second and third sets of primers includes a sequence configured to be added to the different non-random polynucleotide sequences to permit the enriched non-random polynucleotide sequences of the library to anneal to a same sequencing primer for the enriched non-random polynucleotide sequences of the library. ’831 Patent col. 63 l. 39-col. 64 l. 42. In February 2013, Natera began selling the Panorama™ Natera Prenatal Screen, a noninvasive prenatal test for Down syndrome. Dkt. No. 1 at 3. In March 2018, plaintiff filed a lawsuit accusing defendant’s prenatal test of infringing the patent-in-suit. Compl. at ¶¶ 14, 18. Natera moves for a motion to dismiss under Rule 12(b)(6) for patent ineligibility under 35 U.S.C. 28 2 1 § 101. Dkt. No. 24 at 1. Natera argues the claims of the ’831 patent are not eligible for patenting 2 because they are drawn to patent-ineligible (naturally occurring) subject matter and are void of any 3 inventive concept. Dkt. No. 24. 4 5 LEGAL STANDARD Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint 7 if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to 8 dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its 9 face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). This “facial plausibility” standard 10 requires the plaintiff to allege facts that add up to “more than a sheer possibility that a defendant 11 United States District Court Northern District of California 6 has acted unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While courts do not require 12 “heightened fact pleading of specifics,” a plaintiff must allege facts sufficient to “raise a right to 13 relief above the speculative level.” Twombly, 550 U.S. at 555, 570. 14 To state a claim for patent infringement, “a patentee need only plead facts sufficient to 15 place the alleged infringer on notice. This requirement ensures that the accused infringer has 16 sufficient knowledge of the facts alleged to enable it to answer the complaint and defend itself.” 17 Phonometrics, Inc. v. Hospitality Franchise Sys., Inc., 203 F.3d 790, 794 (Fed. Cir. 2000). The 18 Federal Circuit has “repeatedly recognized that in many cases it is possible and proper to 19 determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.” Genetic Techs. 20 Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016). 21 22 DISCUSSION 23 Under Section 101 of Title 35 of the United States Code, the scope of patentable subject 24 matter encompasses “any new and useful process, machine, manufacture, or composition of 25 matter, or any new and useful improvement thereof.” Bilski v. Kappos, 561 U.S. 593, 601 (2010) 26 (quoting 35 U.S.C. § 101). Section 101 “contains an important implicit exception: Laws of nature, 27 natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int'l, 134 28 S. Ct. 2347, 2354 (2014) (internal quotations omitted). They are not patent-eligible because “they 3 1 are the basic tools of scientific and technological work,” which are “free to all men and reserved 2 exclusively to none.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 3 (2012) (internal quotations omitted). 4 allowing patent claims for such purported inventions would “tend to impede innovation more than 5 it would tend to promote it,” thereby thwarting the primary object of the patent laws. Id. at 71. The United States Supreme Court has explained that 6 In Alice, the leading case on patent-eligible subject matter under § 101, the Supreme Court 7 refined the “framework for distinguishing patents that claim laws of nature, natural phenomena, 8 and abstract ideas from those that claim patent-eligible applications of those concepts” originally 9 set forth in Mayo. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. 66). This analysis proceeds in 10 two steps. United States District Court Northern District of California 11 The first step looks to determine whether claims are directed to a patent-ineligible concept. If they are, the second step is to consider whether the additional elements recited in the claim transform the nature of the claim into a patent-eligible application by reciting an inventive concept that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. 12 13 14 15 Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1380 (Fed. Cir. 2015) (internal quotations and citations omitted). 16 17 18 19 20 21 22 23 24 25 26 27 I. Directed Towards a Patent-Ineligible Concept The “‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.Cir.2015)) (citing Genetic Techs., 818 F.3d at 1375 (Fed.Cir.2016)). “The courts have recognized that it is not always easy to determine the boundary between abstraction and patent-eligible subject matter.” Internet Patents, 790 F.3d at 1347 (Fed. Cir. 2015) (citing recent precedent highlighting patents that attempt to preempt use of the laws of nature or abstract ideas when determining the boundary). See also Parker v. Flook, 437 U.S. 584, 589 (1978) (“The line between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.”). 28 4 1 Regarding patent-ineligible concepts, the Supreme Court has held that there is a “rule 2 against patents on naturally occurring things . . . .” Ass'n for Molecular Pathology v. Myriad 3 Genetics, Inc., 569 U.S. 576, 589 (2013). The Supreme Court ruled that “[l]aws of nature, natural 4 phenomena, and abstract ideas are not patentable.” Id. at 589 (citing Mayo, 132 S. Ct. at 1293) 5 (internal quotations omitted). Natera argues the ’831 patent is directed towards a patent-ineligible concept because it is 7 concerned primarily with obtaining a library that contains non-altered DNA sequences that are 8 naturally occurring. Dkt. No. 24 at 13-14. Natera also argues the addition of sequence tags or 9 indexing sequences does not make the patent eligible, as the tags “do not otherwise alter the 10 naturally occurring genetic information contained in the DNA sequences of interest.” Dkt. No. 24 11 United States District Court Northern District of California 6 at 15. 12 Illumina responds that the ’831 patent is directed towards a “novel method of preparing a 13 synthetic nucleic acid library comprised of non-naturally occurring nucleic acid molecules” Dkt. 14 No. 32 at 8. Illumina argues that the resulting DNA is not naturally occurring “because all of the 15 claims recite the use of primers in the second or third round of amplification that include either the 16 sequences for a same sequencing primer (claim 1) and/or an index sequence (claims 2-3 and 14).” 17 Dkt. No. 32 at 15. 18 The Court looks to analogous cases for guidance. In Ariosa Diagnostics, Inc. v. Sequenom, 19 Inc., the Federal Circuit held the patent at issue (the ’540 patent) was directed towards patent- 20 ineligible subject matter, affirming this Court’s ruling. 788 F.3d 1371, 1373 (Fed. Cir. 2015) 21 (“The steps of the method of claim 1 of the ′540 patent include[d] amplifying the cffDNA 22 contained in a sample of a plasma or serum from a pregnant female and detecting the paternally 23 inherited cffDNA.”). The Federal Circuit explained the claims of the ’540 patent were “directed 24 to a multistep method that starts with cffDNA taken from a sample of maternal plasma or serum— 25 a naturally occurring non-cellular fetal DNA . . . .” Id. at 1376. The Federal Circuit held that 26 “[t]he method ends with paternally inherited cffDNA, which is also a natural phenomenon. The 27 method therefore begins and ends with a natural phenomenon. Thus, the claims are directed to 28 matter that is naturally occurring.” Id. The Federal Circuit noted that “the claims at issue, as 5 1 informed by the specification, are generally directed to detecting the presence of a naturally 2 occurring thing or a natural phenomenon, cffDNA in maternal plasma or serum.” Id. (emphasis 3 added). The claims of the ’831 patent similarly use cffDNA, beginning with samples of naturally 5 occurring “fetal and maternal cell-free DNA.” ’831 Patent col. 63 l. 41-42. The ’831 patent is 6 also directed towards amplifying specific sequences of the cell-free DNA and detecting fetal 7 aneuploidies. See ’831 Patent at [57]. Like the claims in Ariosa that were directed to the detection 8 of naturally occurring cffDNA, the claims of the ’831 patent only enable aneuploidy detection if 9 the non-random sequences retain their natural arrangement. Consequently, the method claims of 10 the ’831 patent also “end[] with a natural phenomenon.” See Ariosa, 788 F.3d at 1376. 11 United States District Court Northern District of California 4 Accordingly, based on the currently available information, the Court finds that the ’831 patent is 12 directed towards patent-ineligible subject matter. 13 14 II. Inventive Concept 15 An inventive concept occurs when “the claims are “more than a drafting effort designed to 16 monopolize the [abstract idea]” and “the claims may be read to ‘improve[ ] an existing 17 technological process.’” Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 18 1341, 1351 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2356-2357 (2014)). Moreover, “well- 19 understood, routine, conventional activity” “is normally not sufficient to transform an 20 unpatentable law of nature into a patent-eligible application of such a law.” Mayo, S. Ct. at 1291 21 (citing Parker, 437 U.S. at 590). 22 Illumina argues the ’831 patent is an inventive concept because it does “not preempt 23 downstream use of any naturally occurring substance” and is tethered to the specific technological 24 realm of analyzing “fetal and maternal cell-free DNA for aneuploidy determination.” Dkt. No. 32 25 at 19. However, “the absence of complete preemption does not demonstrate patent eligibility.” 26 Ariosa Diagnostics, 788 F.3d at 1379. The Court elaborated that “[w]here a patent's claims are 27 deemed only to disclose patent ineligible subject matter under the Mayo framework . . . 28 preemption concerns are fully addressed and made moot.” Id. 6 1 Natera argues the ’831 patent does not contain an inventive concept because the selective 2 enrichment of DNA in the patent involves well-known, routine, and conventional amplification 3 techniques. These include polymerase chain reaction (PCR) as well as basic and conventional 4 amplification tools such as primers, sequencing tags, and indexing sequences. Dkt. No. 24 at 16- 5 17. Illumina responds that the ’831 patent improves upon prior art techniques by addressing a 6 need for selective enrichment of DNA sequencing for aneuploidy analysis to avoid producing non- 7 target amplification products. Dkt. No. 32 at 18-19. The Court finds that at this stage in litigation the factual record is not sufficient for the 9 Court to conclude whether there is an inventive concept. Specifically, the Court cannot determine 10 whether the amplification of “at least 100 different non-random polynucleotide sequences” and the 11 United States District Court Northern District of California 8 performance of “successive rounds of amplification using primers that are directed to sequences 12 within the products of prior amplification reactions” are routine or conventional. See ’831 Patent 13 col. 63 l. 49-50; See Dkt. No. 32 at 11. Moreover the Court cannot determine whether the claimed 14 selective enrichment leads to a technological improvement. See ’831 Patent col. 63 l. 44-51. 15 Accordingly, the Court DENIES defendant’s motion to dismiss. 16 CONCLUSION 17 18 19 For the foregoing reasons, the Court DENIES the motion to dismiss without prejudice to renew on a fuller factual record. 20 21 IT IS SO ORDERED. 22 23 24 25 Dated: June 26, 2018 ______________________________________ SUSAN ILLSTON United States District Judge 26 27 28 7