Sequenom’s patent claim in question:
1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises:
amplifying a paternally inherited nucleic acid from the serum or plasma sample and
detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.
The big idea here was to recognize that fetal DNA might be floating around in the mother’s blood and that the fetal DNA could be selectively amplified by focusing on the paternally inherited portion of its DNA (rather than the maternally inherited).
The claim itself has two simple steps: (1) amplifying paternally inherited DNA from a plasma sample from a pregnant female and then (2) detecting the presence of the DNA. The technology for amplifying and detecting was already well known at the time of the invention here. Further, these two steps are the ones always almost used to detect particular DNA.
The invention here solves a very practical problem accessing fetal DNA without creating a major health risk for the unborn child. Of course, the problems solved in Mayo and Alice were also very practical and that fact did not change the result.
I am hard-pressed to see how this claim overcomes Mayo/Alice. The “big ideas” expressed in the invention are seeming laws of nature and the idea of amplifying paternal DNA just relies upon a natural correlation in the same way that the inventors relied upon the drug metabolite in Mayo. The actual implementation of these ideas appear preemptive of the ideas and rely only upon well known and expected implementation steps.
To me, the push for en banc review is – at its heart – either a showpiece for the Supreme Court or a request to undermine the Supreme Court’s precedent.