In my post on this blog of June 17th, I speculated that the positive comments by the Supreme Court in the Myriad decision about the patent-eligibility of claims directed to new applications of natural products (like the BRCA genes) would be available to temper the damage caused by the Court’s holding that isolated genes are not patentable. I wrote that this language seemed to mirror Judge Bryson’s concurrence-in-part in the Myriad decision below. I, and some of the commentators noted that not all of the Myriad method claims had been challenged by the ACLU.
Myriad apparently intends to test these legal waters by filing suit in Utah on Tuesday to enjoin Ambry Genetics Corp. from offering its versions of the BRACA1 and BRACA2 tests. Among the asserted claims were the method claims not challenged by the ACLU or considered by the Supreme Court, including the remaining method claims of U.S. Pat. No. 6,033,857. In its complaint, Myriad noted that the Court “underscored the importance and applicability of method-of-use patents for gene-based diagnostic tests.”
Although nothing will happen very quickly in this suit, at least Myriad has a friendly forum to hear its case this time, and seems determined to force the courts to separate the sheep from the goats in this important area of technology.