The Federal Circuit Court of Appeals has issued a non-precedential order declining Myriad Genetics’ invitation to revisit whether the plaintiff has standing, that is, a redressable legal interest in maintaining the lawsuit, and will thus consider, on remand from the U.S. Supreme Court, whether isolated DNA claims and method claims are patent-eligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). Ass’n for Molecular Pathology v. USPTO, No. 2010-1406 (Fed. Cir., order entered June 11, 2012). The briefing deadline was June 15, and oral argument on the merits has been scheduled for July 20.
Myriad Genetics argues in its supplemental brief that Mayo “has no effect on the Court’s prior judgment that these claims are patent-eligible.” Specifically, Myriad contends that Mayo, because it addressed method patent claims, does not apply to its isolated DNA claims, which are composition claims that are the product of human invention. As to the method claims in its patents, Myriad urges the court to find that its earlier decision is final and undisturbed by the U.S. Supreme Court’s ruling because the petition for certiorari to the Court did not seek review of the Federal Circuit’s ruling on this issue.
The American Civil Liberties Union (ACLU) states in its brief on behalf of the plaintiffs-appellees that “Mayo gave new vigor to three principles for determining whether a law/product of nature has been ‘transformed’ into something patentable. First, courts must examine whether the patent claims preempt what is unpatentable—such as laws and products of nature—a question that was unaddressed by the original majority or concurring opinions. Second, the Court makes clear that what is patented must be based on an ‘inventive concept’ or ‘add enough’ to the natural phenomena, or as it has said in other cases, have ‘markedly different characteristics from any found in nature.’ Under Mayo and previous Supreme Court precedent, trivial chemical transformations cannot meet this test. Third, the Court held that the role of the courts is to decide whether claims fall within the law/product of nature doctrine without regard to industry reliance and the Patent Office’s approval of patents.” The ACLU concludes, “A fair application of these three principles to this case should lead this court to issue a new opinion and judgment affirming the district court as to the isolated DNA claims and [method] claim 20 of the ‘282 patent.”