Judge Stark Denies Defendant’s Motion to Dismiss Under 35 U.S.C. § 101 After Finding Patent-in-Suit Is Not Directed to an Abstract Idea

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By Memorandum Order entered by the Honorable Leonard P. Stark following oral argument in Invitae Corp. v. Natera, Inc., Civil Action No. 21-669-LPS (D.Del. November 29, 2021), the Court denied defendant Natera’s motion to dismiss plaintiff’s claims of patent infringement under 35 U.S.C. §101 after rejecting defendant’s assertion that the patent-in-suit, U.S. Patent No. 10,604,799 (“the ‘799 patent”), was directed to the abstract idea of “an algorithmic method of manipulating and combining genetic sequence data using an [intermediate] data set.”

In its reasoning, the Court noted that what Natera stated was an abstract idea; however, the Court disagreed that Claim 1 was directed to what Natera stated.  Id. at *4.  Rather, the Court agreed with Invitae that Claim 1 is directed to a “technological solution to the technological problem of how to better assemble DNA sequences [. . .] in a more computationally efficient and overall improved way.”  Id. at *4-5.  Thus, the Court found that “the claim process provides solutions to technical problems in the prior art” and, in the Court’s view, “is analogous to claims the Federal Circuit found to be patent eligible” in McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016).

A copy of the Memorandum Order is attached.  Note this was the first of the three Section 101 motions from separate cases decided in one hearing by Judge Stark during his latest Section 101 motion day on November 22, 2021.

The Court noted in its Memorandum Order that “[it] continues to find that its procedure of addressing multiple Section 101 motions from separate cases in one hearing is an efficient use of judicial resources and a beneficial tool for resolving the merits of Section 101 motions.”

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