AMP v. USPTO -- Federal Circuit Confirms Patent Eligibility of Isolated DNA

Federal Circuit SealIn a decision that substantially reiterates its prior opinion, the Federal Circuit decided today in Association for Molecular Pathology v. U.S. Patent and Trademark Office (the Myriad case) that, the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. notwithstanding, claims to isolated human DNA satisfy the requirements of 35 U.S.C. 101:

On the threshold issue of jurisdiction, we affirm the district court's decision to exercise declaratory judgment jurisdiction because we conclude that at least one plaintiff, Dr. Harry Ostrer, has standing to challenge the validity of Myriad's patents.  On the merits, we reverse the district court's decision that Myriad's composition claims to "isolated" DNA molecules cover patent-ineligible products of nature under § 101 because each of the claimed molecules represents a nonnaturally occurring composition of matter.  We also reverse the district court's decision that Myriad's method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells is directed to a patent-ineligible scientific principle.  We affirm the court's decision, however, that Myriad's method claims directed to "comparing" or "analyzing" DNA sequences are patent ineligible; such claims include no transformative steps and cover only patent-ineligible abstract, mental steps.

Further analysis will be provided in subsequent posts.  The opinion of the Court can be found here.