In Ariosa Diagnostics, Inc. v. Sequenom, Inc., Appeal Nos. 2014-1139, -1144, the Federal Circuit denied a petition for rehearing en banc following a panel decision affirming a district court’s finding of ineligible subject matter under § 101.  This order did not have a majority opinion and instead had two concurring opinions and a dissenting opinion.

Concurring opinion: LOURIE joined by MOORE

Judge Lourie expressed concern that the whole category of diagnostic claims may be at risk following Mayo.  Judge Lourie explained that, in his view, at least some of the claims of the patent at issue contained patent-eligible subject matter because they did not merely recite a law of nature, a natural phenomenon, or an abstract idea, but rather included steps that “rely on or operate by” a natural phenomenon or law.  However, Judge Lourie acknowledged that, under Mayo, these steps of the claims must be “divorced” from the asserted natural phenomenon, after which they add nothing innovative.  He therefore found the claims patent-ineligible. 

Concurring opinion: DYK

Judge Dyk also concurred with the decision to deny rehearing and affirmed the district court’s ruling.  Judge Dyk wrote separately to express his concern that having “a too restrictive test” for patent eligibility may discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena. 

Dissenting opinion: NEWMAN

Judge Newman dissented from the decision to deny rehearing, arguing that the claims at issue involved a new application of known scientific fact, and that such a new application was not barred by Association for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013).  Judge Newman further argued that precedent does not require that all discoveries of natural phenomena or their application (in new ways or for new uses) are patent-ineligible.  Accordingly, Judge Newman dissented from the conclusion that Supreme Court precedent excludes this invention from patent-eligibility.