Cases & Deals

Merial successfully defends patent-ineligibility ruling before Federal Circuit

Clients Merial L.L.C.

Jones Day, on behalf of Merial L.L.C., successfully obtained a precedential opinion from an unanimous panel of the U.S. Court of Appeals for the Federal Circuit on April 8, 2016, affirming a district court judgment that a patent asserted against Merial, as well as numerous other biotechnology and pharmaceuticals companies, is invalid under 35 U.S.C. § 101.

Genetic Technologies Limited (“GTG”) originally sued Merial in the United States District Court for the District of Colorado, accusing Merial and numerous others of infringing U.S. Patent No. 5,612,179, titled “Intron Sequence Analysis Method for Detection of Adjacent and Remote Locus Alleles as Haplotypes” (“the ’179 patent”). Jones Day, working with Merial’s Global Head of Intellectual Property, Dr. Judy Jarecki-Black, Esq., successfully moved to have the case transferred to the District of Delaware and then obtained dismissal of GTG’s complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) on the ground that the ’179 patent impermissibly claims a law of nature and contains nothing more inventive beyond that law to qualify it for patent protection under 35 U.S.C. § 101.

On appeal, the Federal Circuit unanimously affirmed the district court’s ruling, agreeing with Merial that the claims of the ’179 patent were directed to a natural law and did not contain any additional elements sufficient to render the claims patent-eligible. In the words of the panel opinion: "We thus hold that the simple mental process step of 'detect[ing] the allele' in claim 1, either alone or in combination with the physical steps described above, does not supply sufficient inventive concept to make the claim patent-eligible under § 101."

The cross-office, cross-practice Jones Day team representing Merial included Greg Castanias, who argued the case in the Federal Circuit on behalf of Merial, and J. Patrick Elsevier, Ph.D.

Genetic Technologies Ltd. v. Merial L.L.C., Nos. 15-1202, 15-1203 (Fed. Cir.)