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.
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