Now that the Supreme Court has issued its unanimous decision reversing the Federal Circuit decision in Prometheus, it is expected to decide the petition for certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case), as early as Monday (March 26). Many are predicting that the Court will issue a “GVR” to grant certiorari only to vacate the Federal Circuit decision that upheld the patent-eligibility of Myriad’s “isolated DNA” claims, and remand the case to the Federal Circuit for rehearing in view of Prometheus. As I try to understand how the Supreme Court’s decision that Prometheus’ method claims do not satisfy 35 § USC 101 because they “effectively claim underlying laws of nature” would impact the Federal Circuit’s decision that Myriad’s isolated DNA claims satisfy 35 § USC 101 because they “cover molecules that are markedly different—have a distinctive chemical identity and nature—from molecules that exist in nature,” I am frightened by a line of reasoning that could undermine the patent-eligibility of a host of pharmaceutical and biological products. Continue reading this entry
In a case that did not present the issue, Judge Dyk wrote a separate opinion to express his views that a claim directed to “[a]n isolated DNA molecule” “raises substantial issues of patentable subject matter under 35 USC § 101.” The issues on appeal in Intervet Inc. v. Merial Ltd., related to claim construction and the doctrine of equivalents. Judge Dyk concurred-in-part and dissented-in-part with the majority’s decisions on claim construction, and disagreed with the majority’s view on the doctrine of equivalents, but wrote a separate opinion “primarily to make clear” that the fact that the court addressed the claim construction issues does not mean that the court had decided that the claims are directed to patent-eligible subject matter.