Today, the Federal Circuit issued its opinion following GVR from the Supreme Court in AMP v. USPTO and Myriad Genetics, Inc., App. No. 2010-1406 (August 16,2012). (A copy of the opinion is available at the end of this post.) Unfortunately, the opinion, authored by Judge Lourie and joined in part by Judges Bryson and Moore, contained nothing to give hope that diagnostic methods resting on natural correlations would be patentable in the future.
The panel began with 36 pages on the standing issue, holding that only Dr. Ostner, who had received a “licensing letter” from Myriad, had standing to pursue this action.
Pages 35-55 of the 62 page majority opinion focused on the claims to isolated DNA molecules, clarifying that “[i]solated DNA is not just purified DNA…but is different in name, character and use.” Judge Lourie wrote that isolating a sub-unit molecule by breaking covalent bonds is not a trivial alteration, since the covalent bond is the “defining boundary” between one molecule and another. Slip op. at 46-48.
Claim 20, directed to the use of transgenic BRCA gene-containing cells to screen for anti-cancer drugs, was likewise held to be patent-eligible, since the “underlying subject matter is man-made.”
