Prenatal Test Slugfest on Hold Over Forum Issues

SAN FRANCISCO (CN) - A spat over the wording of a prenatal genetic defects test patent will go to trial once a federal appeals court decides which forum should hear the dispute, a federal judge ruled Monday.

Verinata Health and Stanford University launched the battle over a noninvasive prenatal test that uses DNA sequencing to search for abnormal chromosomes against Sequenom in 2012, claiming the latter company's test infringes their patents.

Sequenom responded in kind, arguing that Verinata and Stanford had infringed the patent for its MaterniT21 test. U.S. District Judge Susan Illston found Sequenom's patent invalid in 2013, a ruling the company has since appealed to the Federal Circuit.

In the meantime, the biotech companies and Stanford settled the bulk of their claims - save the issue of the wording of Stanford's '018 patent, which it has licensed to Verinata exclusively.

But in 2013, the Patent Trial and Appeals Board found interferences in the patent and patent applications filed by inventors at Chinese University Hong Kong and those filed by Stanford researchers. In 2014, the board found Stanford's '018 patent and the application for a second one lacked sufficient written description as required by U.S. patent law.

Stanford appealed that decision. But Verinata and Sequenom pressed forward, asking Illston to decide the issue of the '018 wording - the last sticking point in their battle.

The judge noted that patent law has no requirement for the length of an invention's written description. But the PTAB's findings - along with dueling evidence presented by both parties - prevent jumping to summary judgment, she said.

"The PTAB examined the same question now before the court. It conducted a thorough and reasoned analysis, which the court finds to be compelling. However, the board's persuasive exposition of the issues is not a sufficient basis to grant summary judgment," Illston wrote.

She continued: "In light of the conflicting evidence presented by the parties - some of which was never presented to the PTAB -the court finds that the question of whether the specification would have adequately described the technique to one of ordinary skill in the art requires resolving questions of fact not suitable for summary judgment."

But rather than press forward with a trial, Illston said that a pending jurisdictional issue presented in a completely unrelated patent case warranted a stay in this one.

In the other case, Biogen Idec MA, Inc. v. Japanese Foundation for Cancer Research, a federal judge ruled that the America Invents Act of 2011 requires that appeals of PTAB insufficient description findings after 2012 be heard by the Federal Circuit - not a district court.

"The three interferences at issue here were all declared after Sept. 16, 2012," Illston wrote. "A bench trial in this case is currently set for March 10, 2015. Should the Federal Circuit affirm in Biogen, it would deprive this court of subject matter jurisdiction over this action. Therefore, in the interest of judicial economy, and to spare the parties the expense of prosecuting a trial that may ultimately prove to have been brought in the wrong forum, the court hereby stays this action pending the resolution of the appeal of Biogen to the Federal Circuit."

Also on Monday, Illston stayed a second case involving Verinata and biotech company Ariosa over the latter's own prenatal tests, until the parties have exhausted their challenges of PTAB findings of invalidity.

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