Myriad : CAFC Alert

Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo

Ryan Chirnomas | August 21, 2012

Association for Molecular Pathology et al. v. U.S.P.T.O. et al.

August 16, 2012

Panel:  Lourie, Bryson and Moore.  Majority opinion by Lourie, concurrence by Moore, dissent by Bryson.

Less than a month after hearing oral arguments, the CAFC panel of Judges Lourie, Bryson and Moore last week issued an updated decision in the controversial AMP v. USPTO (Myriad genetics) case. The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.

As with the decision last year, the panel reached a unanimous conclusion with respect to the issues of standing, subject matter eligibility of the cDNA claims, and subject matter eligibility of the method claims.  However, the panel reached different conclusions with respect to the composition claims which recite isolated DNA.  Since the opinions of the Court are very similar to the opinions issued in 2011, this article will focus on the Judges’ views with respect to the impact of Mayo v. Prometheus (English summary; Japanese summary) on the claims in question, and particularly with respect to the isolated DNA claims.


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CAFC reiterates patent eligibility of isolated DNA in the Myriad case

Ryan Chirnomas | August 16, 2012

Less than a month after hearing oral arguments, the CAFC panel has issued a decision in the controversial AMP v. USPTO (Myriad genetics case). The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.

We will provide further analysis of the decision in the coming days, including the panel’s reasoning why the Mayo holding is limited to method claims, and does not affect composition claims.  Readers should be aware that this is likely not the last word on this case…An en banc rehearing and/or another petition to the Supreme Court are very likely.

The full opinion can be read here:

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1406.pdf

Summary of Oral Arguments in AMP v. USPTO remand

Ryan Chirnomas | July 20, 2012

July 20, 2012

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”.  A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.


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USPTO issues Interim Procedure for §101 examination after Prometheus v. Mayo

WHDA Blogging Team | July 3, 2012

Since the Supreme Court issued their decision in Mayo v. Prometheus (English discussion here; Japanese discussion here), rejections of claims based on failure to comply patent-eligible subject matter requirements of §101 seem to be on the rise.  Until now, Examiners had been given only very little guidance (see here), resulting in Mayo being cited inconsistently.  However, today, the USPTO has provided Examiners with additional guidance about how to handle this issue.  Please click below for more information:

2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature

Memo Cover Letter

These guidelines should improve consistency of the manner in which Mayo and related cases are relied upon by the Examining Corps, as well as provide practitioners with a basic framework for responding to such rejections.

Keep in mind that as the CAFC (and perhaps the Supreme Court, eventually) continues to address this issue in other pending cases such as Myriad and Ultramercial, these guidelines may be revised by the USPTO.

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