Federal Circuit Reaches Same Conclusion in Latest Myriad Genetics Decision | Practical Law

Federal Circuit Reaches Same Conclusion in Latest Myriad Genetics Decision | Practical Law

In its August 16, 2012 decision in Association for Molecular Pathology v. Myriad Genetics, Inc., the US Court of Appeals for the Federal Circuit reached the same conclusion as it did in its earlier vacated ruling. The same divided panel concluded that both Myriad's isolated DNA molecule claims and method claims covering the screening of potential cancer therapeutics by changes in certain cell growth rates are eligible for patent protection under Section 101 of the Patent Act. The Federal Circuit noted that the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. does not control the patent-eligibility question of the isolated DNA molecule claims.

Federal Circuit Reaches Same Conclusion in Latest Myriad Genetics Decision

Practical Law Legal Update 3-520-9540 (Approx. 3 pages)

Federal Circuit Reaches Same Conclusion in Latest Myriad Genetics Decision

by PLC Intellectual Property & Technology
Published on 16 Aug 2012 • USA (National/Federal)
In its August 16, 2012 decision in Association for Molecular Pathology v. Myriad Genetics, Inc., the US Court of Appeals for the Federal Circuit reached the same conclusion as it did in its earlier vacated ruling. The same divided panel concluded that both Myriad's isolated DNA molecule claims and method claims covering the screening of potential cancer therapeutics by changes in certain cell growth rates are eligible for patent protection under Section 101 of the Patent Act. The Federal Circuit noted that the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. does not control the patent-eligibility question of the isolated DNA molecule claims.
On August 16, 2012, the Federal Circuit issued its decision in Association for Molecular Pathology v. Myriad Genetics, Inc., which substantially followed its vacated July 29, 2011 decision holding that Myriad's:
  • Isolated DNA molecule composition of matter claims are patent-eligible subject matter.
  • Method claims to:
    • screening potential cancer therapeutics through changes in certain cell growth rates is directed to patent-eligible subject matter; and
    • comparing or analyzing DNA sequences are patent-ineligible abstract mental processes.
The Federal Circuit noted that the Supreme Court's Mayo Collaborative Services v. Prometheus Laboratories, Inc. decision does not control the patent-eligibility question for the isolated DNA molecule claims.
For a more detailed discussion of this litigation, see Practice Note, In Dispute: Ass'n for Molecular Pathology v. Myriad Genetics.

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