After the Supreme Court decided that the personalized medicine
method claims at issue in Mayo Collaborative Services v. Prometheus
Laboratories, Inc. did not satisfy the patent eligibility
requirements of 35 USC § 101, it was not surprising that the
Court asked the U.S. Court of Appeals for the Federal Circuit to
take a second look at Association for Molecular Pathology v. Myriad
Genetics, Inc.(the ACLU "gene patenting"/BRCAI
case; watch my Washington Legal Foundation "Legally
Brief" video on the remand here). Although Myriad's "isolated
DNA" claims raise different patent eligibility issues than
Prometheus's method claims, both patents relate to technology
that is applied in the medical diagnostic/therapeutic space. It was
more puzzling when the Supreme Court also asked the Federal Circuit
to reconsider Ultramercial, LLC v. Hulu, LLC, where
the claims at issue relate to methods of distributing copyrighted
content over the internet. True, the patent eligibility of the
Ultramercial claims is at issue, but how can the Supreme
Court's explication of the non-patent eligibility of natural
phenomena impact the Federal Circuit's decision that the
Ultramercial methods were not disqualified from patenting as merely
claiming abstract ideas?
One possible—and, in my opinion,
frightening—explanation is that the Supreme Court
disapproves of the Federal Circuit's entire approach to patent
eligibility. Recent Federal Circuit decision have emphasized the
broad language used in § 101 and have cited passages from the
Supreme Court decisions in Bilski and Chakrabarty
supporting an "expansive" view of patent eligible subject
matter. Notably, the Supreme Court's Prometheus
decision did not dwell on the statutory language, but rather
focused on its own jurisprudence that sets forth
"important" exceptions to patent eligibility.
In Ultramercial, Chief Judge Rader (the author of the
panel opinion) described the patent eligibility requirement of
§ 101 as a "coarse filter," with the substantive
requirements of § 112, § 102, and § 103 placing more
important limits on patentability. But the Supreme Court rejected
the premise that those other statutes can safeguard against
improper patents, dismissing the government's arguments along
those lines. Indeed, in one of the most ironic passages of
Prometheus, the Supreme Court expressly
"decline[d] the Government's invitation to
substitute §§102, 103, and 112 inquiries for the
better established inquiry under
The question now is whether the Federal Circuit will read the
remands of Myriad and Ultramercial as sending
§ 101 smoke signals that the court is expected to interpret
and apply when it revisits these cases, or whether the court will
view the remands as nothing but a smokescreen that they can wade
through using their own jurisprudence.
Speaking of abstractions, Myriad filed a paper in the Federal
Circuit on May 30, 2012, asserting that the entire case should be
dismissed because it "presents only abstract, philosophical
questions of no immediate relevance to the parties." Myriad
raises this issue now because the person that the Federal Circuit
previously found to have a "case or controversy" that
supported subject matter jurisdiction has since changed employment,
and now works at institutions with which "Myriad never had any
communications." Myriad suggests that the court dismiss the
case and vacate the district court decision, or at least remand for
the district court to decide subject matter jurisdiction under the
While many are concerned about the impact that a decision
invalidating Myriad's claims could have on the biotechnology
industry, it is not clear that a longer period of uncertainty
surrounding this issue would benefit the industry overall. At least
once the Federal Circuit and Supreme Court render their final
decisions, we will have additional jurisprudence to guide patent
strategies and investment decisions.
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