August 2011

Spotlight Info

In Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office, No. 10-1406 (Fed. Cir. July 29, 2011), the Federal Circuit held that composition claims to “isolated” DNA molecules are patentable subject matter, while method claims simply “comparing” or “analyzing” DNA sequences are not.  After finding that one of the plaintiffs had standing, the Court looked to Supreme Court precedent for the framework for deciding the patent eligibility of isolated DNA molecules.  The Federal Circuit found that the isolated BRCA1 and BRCA2 claimed were not the same molecules as DNA as it exists in the body, and were therefore patentable. 

The Court also addressed a § 101 challenge to Myriad Genetics, Inc.’s (“Myriad”) method claims.  The Federal Circuit found that Myriad’s claims involving methods of “comparing” or “analyzing” claimed only abstract mental processes and were not patentable subject matter under § 101.  Regarding Myriad’s method claim directed to a method for screening potential cancer therapeutics via changes in cell growth rates, the Federal Circuit found that this was patentable subject matter under § 101.  Judge Moore concurred with the majority with respect to the patentability of isolated DNA sequences (other than cDNA sequences) and joined the majority opinion with respect to all other issues.  Judge Bryson dissented from the Court’s holding that isolated DNA was patentable, concurring with the rest of the Court’s opinion.

See this month’s edition of Last Month at the Federal Circuit for a full summary of the decision.