The United States Supreme Court has granted certiorari in the case of AMP v. Myriad Genetics, vacated the previous Federal Circuit opinion, and remanded the case back to the Federal Circuit for reconsideration in view of its recent decision in Mayo v. Prometheus.
Even though the claims in Prometheus were method claims, whereas the challenged claims in Myriad are compositions of matter claims directed to “isolated DNA” sequences, the policy reasons for keeping laws of nature in the public domain to protect innovation set forth in Prometheus could just as easily be transmuted and applied to composition claims. Particularly troubling for “isolated DNA” claims is the rationale in the Prometheus opinion that activities which are routine or conventional in the scientific community, without more, are not patent eligible. Since isolating DNA is a commonly used technique in many labs, this could signal trouble for Myriad. Given the strong precedent set by Prometheus, as it was a unanimous decision, it will be interesting to see if the Federal Circuit still finds the Myriad claims to “isolated DNA” sequences to be patent eligible subject matter, and if Myriad will find its way to the Supreme Court again someday.