David Cavanaugh of Wilmer Cutler Pickering Hale and Dorr. Photo Credit: Diego M. Radzinschi/ALM

The twisting, turning saga of Illumina and Ariosa Diagnostics has taken another detour.

On Monday the U.S. Supreme Court referred an issue from the six-year-old dispute over fetal diagnostics to the Solicitor General's Office for its views, raising the likelihood that it may wind up on the high court's docket next year.

This is not the $27 million patent infringement jury verdict that Illumina Inc. won earlier this year in San Francisco over fetal diagnostics. Rather, it stems from an earlier Patent Trial and Appeal Board decision not to review the validity of one of the patents that underpins the verdict.

Ariosa, which is owned by Roche Molecular Systems, argued that the invention described in Illumina's patent appeared as prior art in a previous patent application—albeit in the claim specification, the portion of the patent that describes the background of the invention, not in the patent claims themselves.

The U.S. Court of Appeals for the Federal Circuit has long held that an invention disclosed in a patent application is not invalidating prior art unless it supports the claims of the patent that issues from the application.

Ariosa and its Wilmer Cutler Pickering Hale and Dorr counsel said this rule allowed Illumina to keep its 7,955,794 gene sequencing patent, “even though it was not the first inventor.” Wilmer partners Thomas Saunders and David Cavanaugh also argue in their cert petition that the federal circuit's rule conflicts with a 1926 Supreme Court precedent.

Ariosa has amicus curiae support from the Electronic Frontier Foundation, R Street Institute and a group of law professors led by Stanford's Phillip Malone. “The federal circuit has departed from the fundamental principle of the patent system: an invention must be new to be patentable,” EFF senior staff attorney Daniel Nazer wrote for EFF and R Street.

Weil, Gotshal & Manges partner Edward Reines argued in opposition that the point is rapidly becoming moot given that the 2011 America Invents Act shifted the patent system from first-to-invent to first-to-file. “Ariosa's petition presents an exceedingly narrow question of rapidly diminishing importance,” Reines wrote. Plus, he argued, the type of informal, nonpublic provision patent application involved in this case was only created by Congress in 1994, and therefore could not have been anticipated by the Supreme Court's century-old decision.