Supreme Court Remands Myriad Following Rejection of Prometheus Patents

When a unanimous Supreme Court earlier this month rejected Prometheus’ claims that isolated DNA sequences are patentable (see Mayo v. Prometheus: SCOTUS Issues Landmark IP Law Opinion), many wondered if the diagnostic testing patents held by Myriad Genetics would meet a similar fate. It took less than one week to get the answer.

On March 26, 2012, the Court remanded Association for Molecular Pathology v. Myriad Genetics back to the Federal Circuit for further consideration. For your reference, here’s a roundup of legal advisories on the ruling. We will continue to update this list as additional commentary comes in:

Supreme Court Remands Myriad Case (McDonnell Boehnen Hulbert & Berghoff LLP)

“… as expected, the Supreme Court issued an Order granting the petition for writ of certiorari in Association for Molecular Pathology v. Myriad, vacating the judgment, and remanding the case back to the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories.” Read the full update»

Supreme Court Remands Myriad for Reconsideration in Light of Mayo (Konstantin Linnik)

“The Federal Circuit will have to review the method claims for screening of therapeutics to determine whether the step of ‘growing cells’ in the presence of a potential cancer therapeutic is still transformative in light of the Mayo decision. The question will be whether the step ‘transformed the process into an inventive application of the [law of nature].’” Read the full update»

Supreme Court Remands Myriad Case in Light of Mayo v. Prometheus (Dechert LLP)

“Judge Lourie’s opinion in Myriad held that isolated DNA sequences are patentable because ‘BRCA1 and BRCA2 in their isolated state are not the same molecules as DNA as it exists in the body; human intervention in cleaving or synthesizing a portion of a native chromosomal DNA imparts on that isolated DNA a distinctive chemical identity from that possessed by native DNA.’  This ‘distinctive chemical identity’ test seems a slender reed now that the Supreme Court rejected the Federal Circuit’s holding in Mayo that the human interventions of ‘administering’ a drug and ‘determining’ its levels in the body conferred patentability to Prometheus’s claims.” Read the full update»

Uncertainty Prevails: Myriad Back to the Federal Circuit (Morrison & Foerster LLP)

“It is unclear how the Prometheus opinion, which deals only with method claims, will guide the Federal Circuit when dealing with the composition claims directed to the isolated DNA sequences themselves. Because the Supreme Court provided no guidance, the Federal Circuit is free to find (as it did previously) that isolated DNA sequences are patentable, because the requirement that they be chemically cleaved from native DNA remains a transformative step.” Read the full update»

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See also: Deciphering the Patent-Eligibility Message in Prometheus, Myriad and Classen (McDonnell Boehnen Hulbert & Berghoff LLP)

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