NATERA, INC. v. NEOGENOMICS LABORATORIES, INC.

CourtDistrict Court, M.D. North Carolina
DecidedAugust 28, 2025
Docket1:23-cv-00629
StatusUnknown

This text of NATERA, INC. v. NEOGENOMICS LABORATORIES, INC. (NATERA, INC. v. NEOGENOMICS LABORATORIES, INC.) is published on Counsel Stack Legal Research, covering District Court, M.D. North Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
NATERA, INC. v. NEOGENOMICS LABORATORIES, INC., (M.D.N.C. 2025).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

NATERA, INC., ) ) Plaintiff, ) ) v. ) 1:23-CV-629 ) NEOGENOMICS LABORATORIES, ) INC., ) Defendant. )

MEMORANDUM OPINION AND ORDER

Catherine C. Eagles, Chief District Judge. The plaintiff, Natera, Inc., alleges that the defendant, NeoGenomics Laboratories, Inc., is infringing two of its patents. Because both patents are directed to a natural phenomenon and do not contain an inventive concept, the patents are invalid for claiming ineligible subject matter. NeoGenomics’ motion for summary judgment will be granted. I. Background Natera is the owner of two patents, U.S. Patent No. 11,530,454 (the “‘454 patent”) and U.S. Patent No. 11,319,596 (the “‘596 patent”). Doc. 1-1 at 2; Doc. 350-10 at 2.1 As is relevant here, Natera uses the claimed steps in these patents in its Signatera product, a test for early detection of cancer recurrence. See Doc. 9-18 at 2–3. NeoGenomics has a competing product called RaDaR. Doc. 94 at ¶ 10; see Doc. 169 at 2–4 (order giving overview of the two products).

1 The Court uses the pagination appended by CM/ECF for all cites to the record. When Natera filed this lawsuit in July 2023, NeoGenomics used a version of its product now known in this litigation as RaDaR 1.0, and Natera alleged infringement of

the ‘454 patent and U.S. Patent No. 11,519,035 (the “‘035 patent”). Doc. 1. The Court entered a preliminary injunction prohibiting NeoGenomics from selling RaDaR 1.0, Doc. 169, and denied NeoGenomics’ motion to dismiss for patent-ineligible subject matter without prejudice to a motion for summary judgment. Doc. 172. NeoGenomics then began developing RaDaR 1.1, a product it contends does not infringe either the ‘454 patent or the ‘035 patent. See Doc. 318 at 1. The parties reached

a partial settlement, resolving all disputes about RaDaR 1.0 and the ‘035 patent, and the Court issued a permanent injunction prohibiting NeoGenomics from selling RaDaR 1.0. Doc. 329. Natera then filed an amended complaint, alleging that RaDaR 1.1 infringes the ‘454 patent and the ‘596 patent. Doc. 353. NeoGenomics filed counterclaims seeking

declaratory judgments of non-infringement, invalidity, and unenforceability of both patents. Doc. 357 at 49–54. Each party has moved for summary judgment. NeoGenomics contends both patents are invalid because they claim patent-ineligible subject matter and because they omit inventors. Doc. 489.2 Natera contends NeoGenomics is infringing the asserted

2 NeoGenomics also moved for summary judgment on non-infringement of claims 1, 8, 10, 12, and 15 of the ‘454 patent. Doc. 489. Natera is no longer asserting infringement of those claims, and the parties agree that they are no longer at issue. See Docs. 547, 563. claims3 and that its inventorship defense is without merit. Doc. 494. The Court held a hearing on August 8, 2025. Minute Entry 08/08/2025.

II. The Patent Claims For the ‘454 patent, independent claim 14 and its dependent claims 22, 24, 26, and 28 are at issue. Docs. 547, 563; see Doc. 1-1 at 222–23. Claim 14 of the ‘454 patent is: A method for preparing a plasma sample of a subject having cancer or suspected of having cancer useful for detecting one or more single nucleotide variant (SNV) mutations in the plasma sample, the method comprising: performing whole exome sequencing or whole genome sequencing on a tumor sample of the subject to identify a plurality of tumor-specific SNV mutations; performing targeted multiplex amplification to amplify 10 to 500 target loci each encompassing a different tumor-specific SNV mutation from cell-free DNA isolated from a plasma sample of the subject or DNA derived therefrom to obtain amplicons, wherein the target loci are amplified together in the same reaction volume; and sequencing the amplicons to obtain sequence reads, and detecting one or more of the tumor-specific SNV mutations present in the cell-free DNA from the sequence reads, wherein the method is capable of detecting an SNV mutation that is present in less than or equal to 0.015% of the cell-free DNA comprising the SNV locus.

Doc. 1-1 at 222. For the ‘596 patent, independent claim 1 and its dependent claim 12 are at issue. Docs. 547, 563; see Doc. 350-10 at 220. Claim 1 of the ‘596 patent is: A method for preparing biological samples useful for monitoring the progression of cancer in a subject, the method comprising: (a) performing sequencing on a tumor biopsy sample of the subject to identify a plurality of tumor-specific mutations, wherein the

3 The asserted claims are claims 14, 22, 24, 26, and 28 of the ‘454 patent and claims 1 and 12 of the ‘596 patent. See Docs. 547, 563. tumor-specific mutations comprise one or more single nucleotide variant (SNV) mutations; (b) evaluating results of the sequencing on the tumor biopsy sample to determine a plurality of target loci specific to the subject, wherein each target locus spans a tumor-specific mutation of the identified plurality of tumor-specific mutations; and (c) assaying cell-free DNA isolated from a plurality of biological samples obtained from the subject at different time points, wherein the assaying comprises: performing targeted multiplex PCR amplification to amplify the plurality of target loci together in the same reaction volume from the isolated cell-free DNA using primers specific to the plurality of target loci for the individual subject; and performing high-throughput sequencing of the amplified DNA comprising the plurality of target loci to obtain sequence reads, wherein an SNV mutation that is present in less than or equal to 0.015% of the cell-free DNA having the SNV locus is detected from the sequence reads.

Doc. 350-10 at 220. The Court construed claims of the ‘454 patent in May 2024, Doc. 280, and construed claims of the ‘596 patent in March 2025. Doc. 394. III. Summary Judgment Standard A “court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A genuine dispute of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In analyzing a summary judgment motion, courts “must construe all facts and reasonable inferences in the light most favorable to the nonmoving party.” Bandy v. City of Salem, 59 F.4th 705, 709 (4th Cir. 2023). The moving party has the initial burden of demonstrating the absence of any material issue of fact; once the moving party meets its initial burden, the non-moving

party must come forward with evidentiary material demonstrating the existence of a genuine issue of material fact requiring a trial. Id. at 709–10; see also Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). IV. Ineligible Subject Matter Section 101 of the Patent Act defines the subject matter eligible for patent protection. It provides that “[w]hoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. “[T]his provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.

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