Last month, in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., District Judge Richard G. Andrews of the U.S. District Court for the District of Delaware denied a motion to dismiss filed by Defendant Oxford Nanopore Technologies, Inc.  Oxford had sought dismissal of a complaint filed by Pacific Biosciences of California, Inc. ("PacBio"), which asserted that Oxford infringed U.S. Patent No. 9,546,400 by commercializing single-molecule sequencing products based on the use of protein nanopores.  In its motion to dismiss, Oxford contended that the '400 patent was directed to patent ineligible subject matter.  In denying Oxford's motion, Judge Andrews determined that under the circumstances of this case, he did not think patent-ineligibility was something that he could fairly decide on a motion to dismiss.

The '400 patent asserted by PacBio, which is entitled "Nanopore sequencing using n-mers," is directed to methods for nanopore sequencing.  Representative claim 1 recites:

1.    A method for sequencing a nucleic acid template comprising:
    a) providing a substrate comprising a nanopore in contact with a solution, the solution comprising a template nucleic acid above the nanopore;
    b) providing a voltage across the nanopore;
    c) measuring a property which has a value that varies for N monomeric units of the template nucleic acid in the pore, wherein the measuring is performed as a function of time, while the template nucleic acid is translocating through the nanopore, wherein N is three or greater; and
    d) determining the sequence of the template nucleic acid using the measured property from step (c) by performing a process including comparing the measured property from step (c) to calibration information produced by measuring such property for 4 to the N sequence combinations.

Judge Andrews noted that while the Federal Circuit has made it clear that a district court can decide a patent-ineligibility claim at the motion to dismiss stage, the Federal Circuit has also made it clear that there will be cases where the motion to dismiss stage is not the appropriate stage for such a determination.  Judge Andrews' Order cites Transmission LLC v. Wells Fargo Bank, NA., 776 F.3d 1343, 1349 (Fed. Cir. 2014), for the proposition that "[a]lthough the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter, claim construction is not an inviolable prerequisite to a validity determination under § 101."  Judge Andrews also noted that despite the parties' agreement that claim construction was not necessary in this case, thereby suggesting that the case was an appropriate one for resolving patent eligibility at the motion to dismiss stage, and despite the fact that both parties had briefed and argued the case without suggesting that he wait, Judge Andrews ultimately denied the motion without prejudice to the motion being renewed at the summary judgment stage.

In denying the motion, the District Court pointed out that PacBio had briefed the motion as though it were a summary judgement motion, submitting an expert declaration, excerpts of deposition testimony, and seventeen patents, patent applications, and journal articles, and that "at argument both sides referred to an understanding of the technology and the state of the art at the time of the invention."  The Court also explained that "[t]he technological understanding can be significant when analyzing the second part -- the 'inventive concept' -- of the Alice test, including the preemptive effect of the claims."  The Court therefore determined that the instant case was not one in which the motion to dismiss stage was the appropriate stage to resolve the issue of the patent eligibility of the asserted patent.

Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. (D. Del. 2017)
Order by District Judge Andrews