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Federal Circuit Sets Schedule for AMP v. USPTO

Myriad

By Donald Zuhn —

In an order issued by the Federal Circuit this morning in Association for Molecular Pathology v. U.S. Patent and Trademark Office ("Myriad"), the Court has requested that the parties file simultaneous supplemental briefs of not more than 20 pages by June 15, 2012 to address the following issue:

What is the applicability of the Supreme Court's decision in Mayo to Myriad's isolated DNA claims and to method claim 20 of the '282 patent?

The Federal Circuit also indicated that it would accept amici curiae briefs of not more than 15 pages, to be submitted by June 15, 2012.  The Court expressly invited the United States to file an amicus brief.

Finally, the Federal Circuit noted that oral argument would be held at 10:00 am on July 20, 2012.

Federal Circuit SealThe Federal Circuit's order comes in response to the Supreme Court's decision on March 26, 2012 to grant the petition for writ of certiorari in Association for Molecular Pathology v. Myriad, vacate the judgment, and remand the case back to the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories (see "Supreme Court Remands Myriad Case").

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3 responses to “Federal Circuit Sets Schedule for AMP v. USPTO”

  1. EG Avatar
    EG

    Isolated DNA Claims: Mayo Collaborative Services is irrelevant. The Supreme Court’s 1980 decision in Diamond v. Chakrabarty (man-made living organism is patent-eligible) is far more analogous in terms of the claimed subject matter, and thus controls, not Mayo Collaborative Services. Unlike the characterization of the methods in Mayo Collaborative Services, these isolated DNA sequences are not “laws of nature,” or merely “laws of nature.”
    Claim 20 of ‘282 patent (method for screening potential cancer therapeutics): Mayo Collaborative Services is distinguishable for at least the reasons given in the original AMP decision which unanimously upheld Claim 20. The claimed method requires that the host cell with the altered BRCA1 gene be grown in the presence and absence of the compound being tested as a prospective cancer therapeutic, with a slower growth rate in the presence of the compound indicating a cancer therapeutic. If Claim 20 can’t pass the patent-eligibility threshold of 35 USC 101, it’s hard to see how any drug screening method can.

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  2. anne brown Avatar
    anne brown

    There shopuld be no effect on the method claim either. Method claim should withstand Mayo/Classen/ Flook/ point of novelty SCT test because the step of exposing the cell is novel since the cell itself is novel.

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  3. patent litigation Avatar
    patent litigation

    Likely it’s taboo for me to say this on a blog for patent lawyers, but I’m glad the Supreme Court ruled as it did in Prometheus. It will be interesting to see how the Myriad patent litigation fares in light of the high court’s ruling.
    http://www.aminn.org/patent-legislation

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