David Gindler has more cutting edges in his practice these days than a knife drawer. The Irell & Manella partner has been litigating the subject matter eligibility of prenatal DNA testing before U.S. District Judge Susan Illston, the U.S. Court of Appeals for the Federal Circuit and the newly reconstituted Patent Trial and Appeal Board. Gindler represents Ariosa Diagnostics, maker of the Harmony prenatal test. Last month he persuaded the Federal Circuit that although a competitor made a significant discovery in the area, its test was not eligible to be patented under the Supreme Court’s recent rulings in Mayo Collaborative Services v. Prometheus Laboratories and Association of Molecular Pathologies v. Myriad Genetics. When he’s not litigating high stakes cases on parallel tracks, Gindler volunteers as board chairman of the Los Angeles Master Chorale and on the executive committee of the L.A. Philharmonic.
What was the key to winning this ground breaking decision? The key started with helping Judge Illston understand the following very important distinction: looking at what is patentable subject matter and determining what is new and inventive in a claim. If someone claimed I’m the first to have discovered X, and that’s what was found to be what was new and useful, then every patent claim which is directed to a natural phenomenon would become patentable.
