United States Federal Circuit

On remand from the U.S. Supreme Court in light of its decision in Mayo Collaborative Services v. Prometheus, Inc., the judgment of the district court in a suit challenging the patentability of certain composition and method claims relating to human genetics, is affirmed in part and reversed in part where: 1) district court properly exercised declaratory judgment jurisdiction because at least one plaintiff has standing to challenge the validity of the patents at issue; 2) district court's decision that defendant's composition claims to "isolated" DNA molecules cover patent-ineligible products of nature under section 101 because each of the claimed molecules represents a non-naturally occurring composition of matter is reversed; 3) district court's decision that defendant's method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells is directed to a patent-ineligible scientific principle is reversed; and 4) district court's decision that defendant's method claims directed to "comparing" or "analyzing" DNA sequences are patent ineligible is affirmed as such claims include no transformative steps and cover only patent-ineligible abstract, mental steps.

Appellate Information

• Decided 08/16/2012
• Published 08/16/2012

Judges

• Lourie

Court

• United States Federal Circuit

Counsel