Last Month at the Federal Circuit - August 2011


In this issue: Preliminary Injunction Upheld to Enforce Forum Selection Clause Where Continuations of Licensed Patents Are Impliedly Licensed; Claim Differentiation Does Not Trump Written Description in Claim Construction; Disclosure of a Less-Than-Ideal Use of a Prior Art Compound Is Sufficient to Render It Foreseeable for Purposes of Prosecution History Estoppel; Merely Pointing Out Differences in What the Claims Cover Is Not a Substantive Argument as to Separate Patentability of the Claims; Isolated DNA Is Patent-Eligible Subject Matter Under 35 U.S.C. § 101; and Federal Circuit Affirms Exceptional Case Finding and Rule 11 Sanctions Against a Patent-Holding Company and Its Counsel.

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 below for a full summary of the decision.

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