On July 20, the United States Court of Appeals for the Federal Circuit heard re-argument in Association for Molecular Pathology et al. v. United States Patent and Trademark Office et al. On the panel were Judges Alan Lourie, William Bryson, and Kimberly Moore. The Federal Circuit decided in 2011 that certain claims to isolated DNA were patent-eligible under 35 U.S.C. § 101, but the United States Supreme Court vacated the Federal Circuit's judgment and remanded for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) ("Prometheus"). Association for Molecular Pathology v. Myriad Genetics, Inc., 132 S. Ct. 1794, 1794 (2012) (granting certiorari, vacating, and remanding). (For a previous discussion on Myriad supplemental briefing for the Federal Circuit see our blog here.)
Myriad Genetics ("Myriad") argued that nothing in Prometheus should change the conclusion that isolated genes are patent-eligible. More specifically, Myriad addressed the Prometheus Court's concern that access to products of nature should not be "preempted." In response to this concern, Myriad explained that nothing in Prometheus altered the Supreme Court's earlier decision in Diamond v. Chakrabarty, 100 S. Ct. 2204 (1980), which held that a genetically-engineered bacterium constituted patentable subject matter, and placed great importance on the fact that the bacterium was human-made. Additionally, Myriad addressed the effect of Prometheus on Claim 20 of U.S. Pat. No. 5,747,282 ("Claim 20"), which recites:
A method for screening potential cancer therapeutics which comprises: growing a transformed eukaryotic host cell containing an altered BRCA1 gene causing cancer in the presence of a compound suspected of being a cancer therapeutic, growing said transformed eukaryotic host cell in the absence of said compound, determining the rate of growth of said host cell in the presence of said compound and the rate of growth of said host cell in the absence of said compound and comparing the growth rate of said host cells, wherein a slower rate of growth of said host cell in the presence of said compound is indicative of a cancer therapeutic.
Myriad argued that unlike the claim in Prometheus
, which claimed a method based on a routine idea
, Claim 20 applies routine steps
to a new
composition of matter (i.e., the transformed eukaryotic host cell containing an altered BRCA1 gene).
The Association for Molecular Pathology ("AMP") argued that the breath of the claims at issue is "stunning." It argued that because of this breadth, the claims preempt the use of products of nature, and therefore must therefore are invalid under section 101 as interpreted by Prometheus. Judge Moore was not persuaded by this argument and recited a quote from Prometheus that explained that patent eligibility has never been decided based upon whether a law of nature is "sufficiently narrow." Therefore, Judge Moore said that AMP's preemption argument was "a waste of time and space." Regarding Claim 20, AMP argued that this claim was invalid under Prometheus because it simply recited "putting the stuff all together in the cell and seeing what happens." Especially interesting was AMP's response to a question from Judge Lourie, who inquired whether a method of using penicillin would be patent-eligible. Although the argument was not entirely clear, it appears that AMP was arguing that a method for using penicillin's anti-bacterial properties is "clearly not patentable."