Federal Circuits Myriad Decision Reaffirms Patentability of Isolated DNA Sequences
By Christine Willgoos & Petra Scamborova
Summary of Opinion
On July 29, 2011, The U.S. Court of Appeals for the Federal Circuit decided
On the merits, the Court held that Myriad's patent composition claims directed to isolated DNA molecules, whether limited to cDNAs or not, are directed to patent-eligible subject matter under 35 U.S.C. § 101. Thus, the Court reversed the district courts grant of summary judgment of invalidity under § 101. The Court also reversed the district courts decision that Myriads method claims directed to screening potential cancer therapeutics is directed to patent-ineligible subject matter, holding that the claims were patent eligible because they contained transformative steps. The Court, however, affirmed the district courts decision that Myriads method claims directed to comparing and analyzing DNA sequences are patent ineligible because they include no transformative steps and instead cover only abstract, mental steps.
The Court's decision regarding claims directed to isolated DNA molecules followed Supreme Court precedent in construing § 101 language broadly. See 35 U.S.C. § 101; Myriad, slip op. at 36 (citation omitted) (In choosing such expansive terms . . . modified by the comprehensive any, Congress plainly contemplated that the patent laws would be given wide scope.). Notably, in deciding the patentability of Myriads method claims, the Court employed the "machine-or-transformation" test as a means by which to determine statutory subject matter under § 101 in light of Bilski v. Kappos, 130 S. Ct. 3218 (2010). See also Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347, 1350 (Fed. Cir. 2010).