No. 18-109
In the

Supreme Court of the United States
ARIOSA DIAGNOSTICS, INC.,
Petitioner,
v.
ILLUMINA, INC.,
Respondent.

On Petition for a Writ of Certiorari to the United
States Court of A ppeals for the Federal Circuit

BRIEF OF AMICI CURIAE ELECTRONIC
FRONTIER FOUNDATION AND R STREET
INSTITUTE IN SUPPORT OF PETITIONER
Charles Duan
R Street Institute
1212 New York Avenue NW,
Suite 900
Washington, DC 20005
(202) 525-5717
cduan@rstreet.org

*Daniel K. Nazer
A lexandra H. Moss
Electronic Frontier
Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
daniel@eff.org
*Counsel of Record

Attorneys for Amici Curiae

282473

A
(800) 274-3321 • (800) 359-6859

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TABLE OF CONTENTS
Page
TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i
TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . ii
INTEREST OF AMICI CURIAE . . . . . . . . . . . . . . . . . . 1
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
I.  The Federal Circuit Decision Violates
the Fundamental Principle That, to Be
 
Patentable, an Invention Must Be New . . . . . . . . 6
II.  The Statutory Text and Legislative History
Offer No Basis for the Federal Circuit’s
Exception to the Rule that Inventions
 
Must Be New to Be Patentable . . . . . . . . . . . . . . .8
III. This Case Raises Important Questions
on the Fundamental Public Policies
of Patent Law, Stability of the Patent
System, and Complex ity of Federal
 
Administration of the Patent Laws . . . . . . . . . . 10
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

 ii
TABLE OF CITED AUTHORITIES
Page
Cases
Alexander Milburn Co. v.
Davis-Bournonville Co.,
  270 U.S. 390 (1926)  . . . . . . . . . . . . . . . . . . . . . . . passim
Bonito Boats v. Thunder Craft Boats,
  489 U.S. 141 (1989)  . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Graham v. John Deere Co. of Kan. City,
  383 U.S. 1 (1966) . . . . . . . . . . . . . . . . . . . . . . . . 3, 4, 6, 8
Hazeltine Research, Inc. v. Brenner,
  382 U.S. 252 (1965) . . . . . . . . . . . . . . . . . . . . .  7, 8, 9, 14
Kimberly-Clark Corp. v. Johnson & Johnson,
  745 F.2d 1437 (Fed. Cir. 1984) . . . . . . . . . . . . . . . . . . . 8
Lear, Inc. v. Adkins,
  395 U.S. 653 (1969) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Statutes
35 U.S.C. § 102  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
35 U.S.C. § 122  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
America Invents Act, Pub. L. No. 112-29,
  125 Stat. 284 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

 iii
Cited Authorities
Page
American Inventors Protection Act of 1999,
  Pub. L. No. 106-113, § 4502, 113 Stat. 1501 (1999)  . . 9
Legislative Materials
H.R. Rep. No. 106-464 (1999) . . . . . . . . . . . . . . . . . . . . . 10
H.R. Rep. No. 82-1923 (1952)  . . . . . . . . . . . . . . . . . . . . . . 9
Other Authorities
Michael D. Frakes & Melissa F. Wasserman, Is the
Time Allocated to Review Patent Applications
Inducing Examiners to Grant Invalid Patents?
Evidence f rom Microlevel Application
 Data, 99 Rev. Econ. Stat. 550 (2017) . . . . . . . . . .  12-13

 1
INTEREST OF AMICI CURIAE
Amicus curiae the Electronic Frontier Foundation
(“EFF”) is a non-profit civil liberties organization that
has worked for more than 25 years to protect consumer
interests, innovation, and free expression in the digital
world. EFF and its more than 40,000 dues-paying
members have a strong interest in helping the courts and
policy-makers ensure intellectual property and law serves
the public interest.
Amicus curiae the R Street Institute is a non-profit,
non-partisan public-policy research organization. R
Street’s mission is to engage in policy research and
educational outreach that promotes free markets, as well
as limited yet effective government, including properly
calibrated legal and regulatory frameworks that support
Internet economic growth and individual liberty. R
Street’s particular focus on Internet law and policy is one
of offering research and analysis that show the advantages
of a more market-oriented society and of more effective,
more efficient laws and regulations that protect freedom
of expression and privacy.1

1.  Pursuant to Rule Supreme Court Rule 37.3(a), all parties
have provided their consent to the filing of this brief. Pursuant to
Rule 37.6, no counsel for a party authored this brief in whole or in
part, and no counsel or party made a monetary contribution intended
to fund the preparation or submission of the brief. No person or
entity, other than amici, their members, or their counsel, made a
monetary contribution to the preparation or submission of this brief.

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INTRODUCTION
The Federal Circuit has departed from the fundamental
principle of the patent system: an invention must be new
to be patentable. Instead, it held that second-comers
may receive the powerful rights of a U.S. patent, even
for ideas that someone else previously described in a
published patent application. That result contravenes
this longstanding principle and undermines the patent
system’s goal of promoting innovation, instead swinging
the door open to applicants who wish to patent old
ideas. The Federal Circuit’s decision to impose this new
requirement is an erroneous departure from this Court’s
precedents, Congress’s intent, and the Constitution’s
mandate that the patent power promote rather than inhibit
innovation in this country.
This departure from well-settled law must not be
taken lightly. Unless reversed, Ariosa will winnow
incentives and opportunities for innovation by allowing
patents on old and known ideas to continue impeding the
economically fruitful endeavors of others. This will not
only insulate weak patents from meaningful post-issuance
review, but also encourage future applicants to claim as
their own advances that others already made, leading the
Patent Office to issue patents that impede rather than
promote technological progress. It further introduces
problematic instabilities into the mechanics of the Patent
Act and into the administration of the Patent Office as
an agency. These serious consequences necessitate this
Court’s review.
1.  By allowing a second applicant to collect a patent
on an invention earlier disclosed by a first applicant,

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the Federal Circuit ignores a principle of constitutional
dimensions, that a patent is not to “remove existent
knowledge from the public domain, or to restrict free
access to materials already available.” Graham v. John
Deere Co. of Kan. City, 383 U.S. 1, 6 (1966). That principle
underlies the seminal case on the effect on a secondcomer’s patent application of an earlier application filed
with the Patent Office. Because “one really must be
the first inventor in order to be entitled to a patent,”
Alexander Milburn Co. v. Davis-Bournonville Co., 270
U.S. 390, 400 (1926), any information disclosed in the
earlier application is existent knowledge that the secondcomer may not patent.
Here, the existent knowledge was presented in
a provisional patent application, known as the “Fan
reference.” This application was submitted to the Patent
Office over seven months before Respondent sought its
patent application, and it was duly published and made
open to the public under U.S. law. There is no dispute that
this preexisting knowledge would invalidate Illumina’s
patent if it appeared in the applicant’s claims—the part of
the application specifying the boundaries of the applicant’s
legal rights—as well as the part describing the nature and
operation of the applicant’s work.
But the Federal Circuit held that a technical exception
attached: The knowledge disclosed in the Fan reference
could only count as prior art if it was also recited in the
claims. Thus, based on the placement rather than the
substance of this otherwise invalidating disclosure, the
court sustained Illumina’s patent, and thus the Patent
Office’s grant to a second-comer.

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In so doing, the court approved a patent that violates
the Graham and Milburn rule against patents covering
old ideas already available to the public. The technical
exception devised by the Federal Circuit allows for secondcomers, such as Respondent, to obtain patents on ideas
already put before the Patent Office, such as the Fan
reference. Neither Graham nor Milburn countenances
such an exception, and certiorari should be granted to
correct that deviation from precedent.
2.  The Federal Circuit justified its departure from
this Court’s cases based on its construction of the text of
the Patent Act, but a review of the statutory text and its
legislative history leaves no room for that construction.
The plain meaning of 35 U.S.C. §  102(e)2 renders any
description in a published application or granted patent
effective as prior art as of the date of the earliest
application from which it claims priority. Furthermore,
Congress’s intent as reflected in the legislative history of
the 1952 Patent Act as well as the 1999 amendments to
the Act make apparent that Congress was codifying this
Court’s case law, not altering it. Statutory construction
thus confirms that the rule this Court set forth in Milburn
applies with full force to published patent applications such
as the Fan reference at issue here, requiring consideration
of all it teaches, not just what is claimed.
3.  Correction of the Federal Circuit’s erroneous
departure from precedent and statute is of critical
importance, because otherwise the Federal Circuit’s
2.  Unless otherwise noted, all statutory references are to Title
35 and to the version in effect prior to the passage of the America
Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).

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erroneous decision will hurt innovation and patent quality,
render the patent laws unstable, create bad incentives for
patent applicants, and complicate federal administration
of the patent system.
First, patents are granted to encourage disclosure of
new inventions. Granting a patent on an invention already
disclosed to the public works the opposite effect, closing
off knowledge that was previously free to use.
Second, Ariosa’s rule will render the criteria for
patentability unstable over time, even as applied to a single
patent, because it renders the prior art status of a patent
application dependent on the contents of applications filed
later. Under the Federal Circuit’s rule, then, what is prior
art one day could evaporate the next, or vice versa.
Third, applicants will have even less motivation to
draft narrow claims, which give the public greater notice
and certainty as to a patent’s scope. Drafting broad claims
will now not only allow them to ensnare more infringers,
but will also be necessary to ensure their submission
prevents the allowance of claims covering all it teaches.
Fourth, examiners will have to choose between
allow ing overbroad claims to issue and requiring
amendments that narrow the claims, but in so doing,
shrink the pool of prior art available to the examiner
in future patent applications. This potentially affects
incentives both for their substantive work, in terms of
whether to allow or reject patent claims, and for their
procedural incentives to complete examination more or
less quickly.

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The Federal Circuit’s decision will create these
perverse incentives that undermine the quality of issued
patents as well as the patent system’s ability to serve its
goal of promoting innovation into the future. These are
serious harms to the government, as administrator of the
patent laws, and to the public, as intended beneficiary of
those laws. Certiorari should be granted.
ARGUMENT
I.  The Federal Circuit Decision Violates the
Fundamental Principle That, to Be Patentable, an
Invention Must Be New.
Section 102(e) of the Patent Act codifies a fundamental
principle this Court has long recognized: an invention
must be new to receive a patent. That requirement
comes from the Constitution, which makes clear that
“[t]he patent monopoly was not designed to secure to the
inventor his natural right in his discoveries,” but as “a
reward, an inducement, to bring forth new knowledge.”
Graham, 383 U.S. at 9 (1966) (emphasis added). In other
words, patents are not designed to compensate individual
inventors for their efforts, but to create an incentive for
further innovation.
The novelty requirement is critical to ensuring that
patent protection strikes an appropriate balance that
serves the public’s interest in advanced research and
continued technological development. Patents promote
innovation by giving patent owners the right to exclude
others from using the advances they have made. But when
those rights cover subject matter that is not new, patents
hurt the public by allowing patents owners to prevent

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others from using tools that would otherwise be available
as part of the public domain. See, e.g., Lear, Inc. v. Adkins,
395 U.S. 653, 670-71 (1969).
In recognition of that principle, both before and after
the 1952 Patent Act, this Court held patents invalid based
on material in patent applications, and treated patent
applications as prior art for all they contain—not just
what they claim—as of the date they claim priority against
others. See Hazeltine Research, Inc. v. Brenner, 382 U.S.
252 (1965); Milburn, 270 U.S. at 400-402. That rule makes
sense in light of the Constitution’s patent clause. Subject
matter that is disclosed by one applicant and then claimed
by another may seem inventive in the eyes of the second
applicant, but is not new from the perspective of the Patent
Office, which has the earlier disclosure on file.
As the Court explained in Milburn, information
already submitted to the Patent Office is no longer new,
and thus no longer patentable by others: “In view of the
gain to the public that the patent laws mean to secure . . .
one really must be the first inventor in order to be entitled
to a patent.” Milburn, 270 U.S. at 400. Preventing patents
based on disclosures such as those at issue here not only
aligns with the Constitution but encourages the Patent
Office to conduct thorough examinations that consider
related work on record in their files.
Shortly after its creation, the Federal Circuit
recognized that this constitutional principle precluded
patents on preexisting knowledge already available to the
public. It explained: “[N]o patent should be granted which
withdraws from the public domain technology already
available to the public. . . . Society, speaking through

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Congress and the courts, has said ‘thou shalt not take it
away.’” Kimberly-Clark Corp. v. Johnson & Johnson, 745
F.2d 1437, 1453-54 (Fed. Cir. 1984) (citing Graham, 383
U.S. at 6). The contrary decision below flies afoul of that
principle as well as this Court’s precedents. This Court
should reverse that decision, and direct the Patent Office
to invalidate patents, such as Illumina’s, that claim subject
matter already invented by others.
II.  The Statutory Text and Legislative History Offer
No Basis for the Federal Circuit’s Exception to the
Rule that Inventions Must Be New to Be Patentable.
The statutory text and legislative history of the 1952
Patent Act and 1999 American Inventors Protection Act
(“AIPA”) confirm that Congress intended to codify and
extend this Court’s holdings in Milburn and Hazeltine
to published patent applications.
Under the 1952 Act, an applicant may receive no
patent on an invention “described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent”—
that is, a prior-filed application that matures to a granted
patent. 35 U.S.C. § 102(e) (1994). The AIPA created a new
avenue for publicizing patent applications—publication
under 35 U.S.C. §  122(b)—and extended the §  102(e)
prohibition to further include a prior-filed “application for
patent, published under section 122(b).” 35 U.S.C. § 102(e)
(1) (2000). Congress thus explicitly included a reference to
prior art such as Fan—an application published pursuant
to the provisions for publication set forth in § 122(b). And
as should be apparent from this text, neither provision
on its face says anything about the claims of the prior
application, referring instead to what is “described.”

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Furthermore, the legislative history confirms that
Congress was merely codifying Milburn’s holding, not
altering it. The House Committee Report expressly states
that § 102(e) “enacts the rule of Milburn.” H.R. Rep. No.
82-1923, at 17 (1952). It further explains: “Subsection (e)
is another well-recognized condition imposed by a decision
of the Supreme Court which was not expressed in the
existing law; for the purpose of anticipating subsequent
inventors, a patent disclosing the subject matter speaks
from the filing date of the application disclosing the
subject matter.” Id. at 6-7 (emphasis added).
Any lingering doubt that Congress intended to change
the Milburn rule was laid to rest in Hazeltine Research,
Inc. v. Brenner, 382 U.S. 252 (1965), which considered the
effect of the 1952 Act on Milburn. Noting that “Congress
showed its approval of the holding in Milburn,” the Court
rejected the “interesting” argument of the petitioners
that Congress had departed from that holding, seeing “no
reason to depart from the plain holding and reasoning in
the Milburn case.” Hazeltine, 382 U.S. at 255. Mirroring
Milburn, the Court held that to allow an exception to the
rule against second-comer patents “would create an area
where patents are awarded for unpatentable advances in
the art.” Id. at 256.
Similarly, when in 1999 Congress provided for the
default publication of patent applications within 18 months
of filing, 3 Congress amended § 102(e) to make clear that
such publications would qualify as prior art under Milburn
just as granted patents had.
3.  The AIPA amended the Patent Act (§  122(b)) so that patent
applications would be published by default within 18 months of filing if the
applicant did not request an exception. American Inventors Protection
Act of 1999, Pub. L. No. 106-113, § 4502, 113 Stat. 1501, 1501A-561 (1999).

 10
Congress at the time of enactment explained that this
amendment was meant to extend Milburn to published
applications so that they would have effect as prior art as of
their filing date. As the House Report explains, the change
to § 102(e) was intended to give “a published application . . .
prior art effect as of its earliest effective U.S. filing date
against any subsequently filed U.S. applications.” H.R.
Rep. No. 106-464, at 132 (1999) (Conf. Rep.). Congress
could not have been much clearer in drafting § 102(e)(1)
to ensure that published applications would not escape
the rule of Milburn.
Congress’s intent to make disclosures in patent
applications effective as of their priority date should not be
taken lightly or cast aside. The Federal Circuit was wrong
to reach the opposite conclusion, and this Court should
grant certiorari to ensure its error does not undermine
the patent system by eroding the scope of prior art that
Congress and this Court have long made available to
invalidate patents that would otherwise prevent the public
from using tools an applicant was not the first to invent.
III. This Case Raises Important Questions on the
Fundamental Public Policies of Patent Law,
Stability of the Patent System, and Complexity of
Federal Administration of the Patent Laws.
This case raises several questions of national
importance, relating to the proper functioning of the
patent system and to the government’s administration
of those laws through patent examination. Certiorari is
warranted to resolve these issues of widespread concern.

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First, public policy supports treating any description
in a published provisional application as prior art to a laterfiled patent application. It would subvert patent policy to
grant a patent to a later inventor, as the Federal Circuit’s
Ariosa decision will do, merely because an invention was
disclosed in a published application but not claimed. It
would grant a patent right with no concomitant benefit of
new knowledge provided to the public. Cf. Bonito Boats
v. Thunder Craft Boats, 489 U.S. 141, 150-51 (1989). The
public, instead, would be granting a monopoly even though
it already possessed, and was free to use, any unclaimed
inventions in the published application.4
Second, the Ariosa approach creates troubling
instability in determinations of patentability for others
who may seek patent rights or seek to use what has been
publicly disclosed. Under its rule, what is patentable at
one time could become unpatentable later, lending to
undesirable unpredictability in the patent system. That
is because whether information in an application qualifies
at prior art will depend on the contents of later-filed
applications—specifically, whether the claims they contain
map onto the earlier-filed disclosures. The unpredictability
this causes brings unnecessary uncertainty to the
patent system that can be easily avoided by construing
§  102(e)(1) in the same way as §  102(e)(2), such that
published applications are given prior art effect for all
they teach from their priority date.
4.  Certainly there are unusual situations where existing
knowledge does not fall within § 102, such as when that knowledge
is secret or in use in a foreign country. But here Congress has
expressly provided for descriptions in published patent applications
to be prior art. Any exception to that policy should be clearly and
explicitly made by Congress.

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Third, the Federal Circuit’s decision threatens further
harm to the quality of issued patents and incentives for
enhancing quality throughout the patent system. Its rule
will discourage applicants from drafting, and examiners
from requiring, clear and narrow patent claims that should
be encouraged because of the greater public notice they
provide. Following Ariosa, applicants may feel they have
little choice but to file broad claims to ensure that nobody
else can get a patent on what they disclosed to the public
in their application.
Fourth, the appellate decision creates difficult
incentives for patent examiners and thus difficult problems
for the federal agency that administers patent examination.
Under the Federal Circuit’s rule, examiners who require
applicants to narrow claims during prosecution will have
to worry that imposing a requirement that enhances
public notice will come at the expense of knowledge that
would be otherwise available to the public if left within the
scope of the applicant’s claims. These perverse incentives
reward patent draftsmanship and take tools away from
real innovators. Furthermore, examiners will be put
between a rock and a hard place in terms of examination
speed. A virtue of the Milburn rule is that the “delays of
the patent office ought not to cut down the effect of what
has been done.” Milburn, 270 U.S. at 401. In other words,
the Patent Office’s failure to review materials timely—or
at all—does not change the invalidating effect of those
materials. Exceptions to that rule thus pile upon the Office
pressure to complete examination more quickly, pressure
that is already immense given the well-known backlog of
pending applications, and that time pressure likely leads
to poorer-quality examination and lower-quality patents.
See Michael D. Frakes & Melissa F. Wasserman, Is the

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Time Allocated to Review Patent Applications Inducing
Examiners to Grant Invalid Patents? Evidence from
Microlevel Application Data, 99 Rev. Econ. Stat. 550
(2017). Left alone, the Federal Circuit’s rule thus places
the government in the difficult position of assessing these
lose-lose tradeoffs and instructing its examiners on them.5
If Ariosa stands, the effect will not be more innovation,
but more patents—and lawsuits—that could have been
avoided if the Patent Office had simply considered all the
material available to it during a patent examination. Given
the Patent Office’s application backlog, that feat may be
impracticable, but that only confirms the importance of
the rule the Federal Circuit has rejected. If the Patent
Office cannot be expected to examine all of the pending
applications in its files before issuing granted patents, the
public must be able to raise patent challenges based on
material that, if considered, would have shown the Patent
Office the applicant was not the first to invent the subject
matter claimed.
To be sure, this approach will lead to more disappointed
applicants than Ariosa’s approach, but the concerns of
second-comers to the Patent Office do not justify the cost
of systematically allowing patents that deplete rather than
add to the stock of publicly available knowledge. That is
especially true where, as here, we know that information
would have been available because it had already been
disclosed in a submission destined for publication by the
Patent Office itself. The Patent Office’s failure to conduct
5.  In view of these implications for the federal government, it
would be warranted at a minimum for this Court to call for the views
of the Solicitor General in this case.

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a thorough examination ex ante does not justify the cost to
the public of wrongfully preventing the use of knowledge
that would be available if the Patent Office had just said no.
CONCLUSION
For the foregoing reasons, this Court should grant
certiorari, and reverse the Federal Circuit’s decision in
Ariosa and any decisions contrary to this Court’s holdings
in Milburn and Hazeltine.
Dated: August 22, 2018 
Charles Duan
R Street Institute
1212 New York Avenue NW,
Suite 900
Washington, DC 20005
(202) 525-5717
cduan@rstreet.org

Respectfully submitted,
*Daniel K. Nazer
A lexandra H. Moss
Electronic Frontier
Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
daniel@eff.org
*Counsel of Record

Attorneys for Amici Curiae