Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101 (18 June 2021) (Middleton, Nicholas and Burley JJ)


Catchwords:


PATENTS – standard patent claiming method for detection of presence of foetal DNA in maternal plasma or serum – validity – infringement

PATENTS – validity – whether manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990 (Cth) – whether patent claimed a mere discovery of a naturally occurring phenomenon or a method involving a practical application of that discovery – claims disclose a manner of manufacture

PATENTS – validity – lack of sufficiency – whether claims directed to multiple methods – whether each method needs to be sufficiently described – whether specification enables skilled addressee to produce something within each claim – claims sufficiently described

PATENTS – validity – lack of fair basis – construction of specification and claims – whether real and reasonably clear disclosure in specification of what is claimed – whether specification only discloses a method for detecting foetal DNA known in advance to be of maternal origin – where examples in specification are expressed to not limit the scope of the invention – claims fairly based

PATENTS – infringement – where claimed method performed outside of jurisdiction – whether information resulting from use of claimed method can be characterised as a “product” within definition of “exploit” in Schedule 1 of the Patents Act 1990 (Cth) – appeal against infringement findings allowed in part