In the Matter of Certain Activity Tracking Devices, Systems, and Components Thereof, ALJ Lord found two of Jawbone’s health- and sleep-tracking device patents invalid for being directed to ineligible subject matter. Applying the two-part Mayo test, ALJ Lord held that the asserted claims were (1) directed to abstract ideas and (2) did not provide an inventive concept. Jawbone’s U.S. Patent No. 8,961,413 is directed to a wearable device for sleep monitoring, while U.S. Patent No. 8,073,707 is directed to a wearable health and wellness data monitoring device.
On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 14-1139 (Fed. Cir. June 12, 2015). The question posed to the Supreme Court centers around the patentability of diagnostic claims applied to newly-discovered natural phenomena.
The claimed work dates back to 1996, when two doctors discovered paternal cell-free fetal DNA (cffDNA) in maternal blood serum and plasma. With that discovery, the doctors developed a method of testing fetal DNA to determine, among other things, the risk of certain birth defects in a manner far less invasive than conventional techniques, which required DNA samples to be taken directly from the fetus or placenta. The doctors obtained U.S. Patent No. 6,258,540 covering the methods.
The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) determination of unpatentability for claims covering new rules for a card game. The panel found the claims patent-ineligible under the Mayo two-step analysis for 35 U.S.C. § 101. First, they were directed to an abstract idea; second, they lacked an inventive concept sufficient to bridge the gap between abstract idea and invention.