[authors: Courtenay C. Brinckerhoff, Jeanne M. Gills]

On the heels of its unanimous decision holding that the personalized medicine method claims at issue in Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150 (S. Ct. 2012), cannot be patented under 35 USC § 101 because they effectively claim a law of nature, the Supreme Court has asked the Federal Circuit to reconsider its decision in Association for Molecular Pathology v. Myriad Genetics, Inc. No. 10-1406 (Fed. Cir. 2011) (also known as the “ACLU gene patent” case). Rather than taking up Myriad’s isolated DNA claims for review on the merits, the U.S. Supreme Court granted certiorari, vacated the Federal Circuit’s decision, and remanded the case back to the Federal Circuit for reconsideration in view of Prometheus. (Among Supreme Court practitioners, this resolution is referred to as a GVR.) This turn of events is not surprising, but means that the patent-eligibility of claims directed to isolated DNA will remain undecided for at least several more months. For detailed analysis of the Prometheus decision, please refer to our article that was posted last week, Unanimous Supreme Court Invalidates Prometheus Personalized Medicine Claims.”