[author: Courtenay C. Brinckerhoff]
The Supreme Court has issued a “GVR” in Association for Molecular Pathology v. Myriad Genetics, Inc. (the ACLU ”gene patenting”/BRCAI case), granting certiorari only to vacate the Federal Circuit decision that upheld the patent-eligibility of Myriad’s “isolated DNA” claims, and remanding the case to the Federal Circuit for rehearing in view of the Supreme Court’s unanimous decision in Prometheus. While Myriad’s isolated DNA claims raise a different question under 35 § USC 101 than Prometheus’ method claims, this action by the Supreme Court indicates that the Court thinks that the “product of nature” and “law of nature” questions are close enough that the Federal Circuit should revisit its decision in Myriad in view of the analysis the Supreme Court provided in Prometheus.
Stakeholders and practitioners in the fields of personalized medicine, biologics, and pharmaceuticals will be watching closely to see what happens next.
Will the divided panel of Federal Circuit judges who originally decided Myriad be swayed to reach a different conclusion?
Will the Federal Circuit take up the case en banc?
Will the court distinguish Prometheus or decide that the unanimous Supreme Court decision reaches beyond its facts to different patent-eligibilty issues?
Will the court dodge the whole § 101 issue and dismiss for lack of jurisdiction because no plaintiff has standing?