On Monday, the United States Supreme Court granted certiorari in the well-publicized Assn. For Molecular Pathology v. Myriad Genetics, et al. case (“Myriad”) for the purpose of vacating the underlying Federal Circuit decision — finding isolated DNA sequences from human genes as patentable subject matter — and remanding the case for reconsideration in view of its recent ruling in Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc. (“Mayo”).
We have previously written on both Myriad and Mayo. In Myriad, the Federal Circuit held that DNA sequences in their isolated state “are not the same molecules as DNA as it exists in the body; human intervention in cleaving or synthesizing a portion of native chromosomal DNA imparts on that isolated DNA a distractive chemical identity from that possessed by native DNA,” and upheld the validity of a patent claiming isolated DNA sequences. But last week, in a much anticipated case, the Supreme Court determined in Mayo that appending conventional steps to the laws of nature, natural phenomena and abstract ideas does not make such laws, phenomena and ideas patentable. Indeed, the Court expressed concerns that “patent law not inhibit further discovery by improperly tying up the future use of laws of nature.” Mayo, slip op. at 16.
Whether the Federal Circuit can reconcile its position in Myriad with the recent Mayo decision — and the Court’s concerns stated therein — remains to be seen. In the meantime, pundits and practitioners will continue to speculate on and grasp the influence of Mayo on Myriad, and beyond. As always, Gibbons P.C. will track the progress of these developments and provide updates accordingly.
Charles H. Chevalier is an Associate in the Gibbons Intellectual Property Department.