By Grantland Drutchas --
Perhaps one of the most intriguing issues coming out of the Supreme Court's Myriad decision is whether it leaves any room for the "inventive concept" test raised by earlier Supreme Court decisions, including Mayo v. Prometheus. Or is inventive concept merely limited to method claims? Compare the mental gymnastics that the Federal Circuit had to go through for the CLS Bank v. Alice decision. Where is any of that in this Supreme Court decision?
For cDNA claims, Justice Thomas issued nothing more than the following terse statement:
cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. As already explained, creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. Petitioners concede that cDNA differs from natural DNA in that "the non-coding regions have been removed." Brief for Petitioners 49. They nevertheless argue that cDNA is not patent eligible because "[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician." Id., at 51. That may be so, but the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a "product of nature" and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.
Op. at pp. 16-17. Although he dropped a footnote stating that "[w]e express no opinion whether cDNA satisfies the other statutory requirements of patentability" (Id., p. 17 n. 9), none of the types of "inventive concept" analyses the Federal Circuit wrestled over in the CLS case was provided.
Justice Scalia's equally terse concurrence also does not address the "inventive concept" issue as it relates to cDNA. "[T]he portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature." Scalia Concurrence, p. 1.
There is no question that producing cDNA is and was a well-understood, routine, conventional activity, but that didn't seem to trouble Justice Thomas or the rest of the Supreme Court. If it is enough that the lab technician is, as Justice Thomas notes, "unquestionably creat[ing] something new," regardless of how routine such a step is during the relevant time period, what does that mean for the "inventive concept" concept? Or is it that the Supreme Court believes the "inventive concept" test is limited to method claims, and these claims are directed to compounds?
Note, too, that not all cDNA may be patentable: A "very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA." Op. at 17.
Sometime in the not too distant future, someone is going to argue the Myriad sub silentio repudiates the "inventive concept" concept. Probably won't gain much traction...
Posted by: Dan Feigelson | June 17, 2013 at 12:59 AM
Do you really think that a decision from the Court based on one doctrine means that any and all other doctrines are repudiated?
I am VERY...
Posted by: Skeptical | June 17, 2013 at 07:37 AM
Prometheus is an example of bad claims making bad law. Hopefully the Federal Circuit will do its part to limit it to its facts -- a method relating to a correlation involving a known compound/parameter with no active steps other than measuring and determining.
Posted by: Courtenay Brinckerhoff | June 17, 2013 at 07:39 AM
cDNA passes the Supreme Court's 101 hurdle, but will likely trip over the 103 hurdle.
Posted by: What, me worry? | June 17, 2013 at 07:40 AM
What, me worry?
Please read the decision again closer. Not all cDNA passes the 101 hurdle.
I agree with you regarding the 103 hurdle, especially given the obvious to try, marketplace as a driver, combining items without synergy cloud that has developed around 103 since the KSR decision.
Posted by: Skeptical | June 17, 2013 at 09:44 AM
cDNA will only trip over the 103 hurdle if the gene or the protein it encodes had already been identified. If you identify a novel gene, describe a sufficient utility (which would likely require linkage to some disease or condition) and claim the cDNA sequence corresponding to the novel gene, then there is no basis for an obviousness rejection. Now, if the protein product had been identified previously and is in the prior art, then you will hit the 103 hurdle and fall on your face (see In re Kubin - Fed Cir case from 2008 or 2009- I think that's the name of the case).
Posted by: Matthew Gibson | June 17, 2013 at 10:16 AM
Thanks Matthew for the in re Kubin reminder.
This was an intersting read: http://www.patentdocs.org/2009/04/in-re-kubin-fed-cir-2009.html
However,... since that time, the Supreme Coourt has taken upon itself EVEN MORE of a penchant for confusing 101 with rationales of dubious 103 nature. Not only have 103-like methods gone beyond making 103 rejctions for compositions, these same 103-like method rejections are being inserted into patent eligibility considerations.
Someone (more like 9 someones) are forgetting that something pretty significant happened in 1952 when the common law ability to define invention was stripped from the courts and the pre-cursor of 101, and placed in 103, with a direct admonition not to negate patentability because of the manner in which the invention was made.
Is there anyone in Congress who can step up and tell the nine Justices that their robes are missing?
I am...
Posted by: Skeptical | June 17, 2013 at 10:39 AM
Courtney: "Prometheus is an example of bad claims making bad law."
What's "bad" about the holding in Prometheus, Courtney? I don't think it was particularly controversial or "bad" that Myriad lost their method claims which covered merely looking at someone's DNA sequence information and "determining" that they had a particular mutation or not.
I also don't see how the holding in Prometheus was necessary or sufficient to reach the Court's decision here. Any Supreme Court decision can be misapplied. The Funk Brothers case seems to have been the key bit of "bad law" that the Supreme Court relied on, somehow, to reach the result in Myriad.
Posted by: Shrivan | June 17, 2013 at 11:38 AM