By Kevin E. Noonan --
The Federal Circuit handed down its long-anticipated decision in Association for Molecular Pathology v. U.S. Patent and Trademark Office (the Myriad case). In an extensive and thorough opinion by Judge Lourie (only appropriate in a case where the District Court's opinion reached 156 pages), the Court affirmed the District Court's decision on standing, reversed the decision regarding isolated DNA claims, and affirmed the decision of unpatentability for method claims reciting merely "comparison" steps, on the grounds that these claims failed the machine or transformation test from Bilski.
Judge Moore wrote a separate concurring opinion, explaining her decision to join Judge Lourie (with regard to the isolated genomic DNA claims) on the grounds that, at this late date it is up to Congress, not the courts, to extend the "laws of nature" exception to isolated DNA.
Judge Bryson dissented from the majority's decision to reverse the District Court on the genomic DNA claims, based (in part) on his understanding that such claims would inhibit whole genome sequencing, and that these claims were analogous to earlier (albeit non-binding) precedent and (in his view) consistent with Supreme Court decisions.
Patent Docs will provide further analysis in upcoming posts.