The Supreme Court's Myriad Decision: Where Does It Leave the "Inventive Concept" Test?

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Building #3Perhaps one of the most intriguing issues coming out of the Supreme Court's Myriad decision is whether it leaves any room for the "inventive concept" test raised by earlier Supreme Court decisions, including Mayo v. Prometheus.  Or is inventive concept merely limited to method claims?  Compare the mental gymnastics that the Federal Circuit had to go through for the CLS Bank v. Alice decision.  Where is any of that in this Supreme Court decision?

For cDNA claims, Justice Thomas issued nothing more than the following terse statement:

cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments.  As already explained, creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring.  Petitioners concede that cDNA differs from natural DNA in that "the non-coding regions have been removed."  Brief for Petitioners 49.  They nevertheless argue that cDNA is not patent eligible because "[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician."  Id., at 51.  That may be so, but the lab technician unquestionably creates something new when cDNA is made.  cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived.  As a result, cDNA is not a "product of nature" and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA.  In that situation, a short strand of cDNA may be indistinguishable from natural DNA.

Op. at pp. 16-17.  Although he dropped a footnote stating that "[w]e express no opinion whether cDNA satisfies the other statutory requirements of patentability" (Id., p. 17 n. 9), none of the types of "inventive concept" analyses the Federal Circuit wrestled over in the CLS case was provided.

Justice Scalia's equally terse concurrence also does not address the "inventive concept" issue as it relates to cDNA.  "[T]he portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature."  Scalia Concurrence, p. 1.

There is no question that producing cDNA is and was a well-understood, routine, conventional activity, but that didn't seem to trouble Justice Thomas or the rest of the Supreme Court.  If it is enough that the lab technician is, as Justice Thomas notes, "unquestionably creat[ing] something new," regardless of how routine such a step is during the relevant time period, what does that mean for the "inventive concept" concept?  Or is it that the Supreme Court believes the "inventive concept" test is limited to method claims, and these claims are directed to compounds?

Note, too, that not all cDNA may be patentable:  A "very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA."  Op. at 17.


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McDonnell Boehnen Hulbert & Berghoff LLP

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