Last week, we mentioned that oral arguments were held in the Myriad Genetics case (a.k.a. Association of Molecular Pathology v. USPTO).
Today, we’ll bring you a brief summary of the oral arguments in that case.
The arguments were heard by a panel of three, consisting of Judge Alan D. Lourie, Judge William Curtis Bryson and Judge Kimberly Ann Moore.
If you’re familiar with the procedural posture of the case, you may remember that in the first go-round, Judge Lourie was all for isolated DNA patenting as was Judge Moore, (although she was more centrist on the whole idea). Judge Bryson, however, was against it.
As predicted, from the parties’ supplemental brief, the Chakrabarty case was a focal point in the arguments advanced by Myriad. Myriad’s attorneys also argued that preemption of natural products was not a separate test for eligibility.
Judge Bryson asked Myriad’s attorney whether isolating DNA was any different from isolating a baseball bat from wood, or from the idea of chopping down a tree and patenting the trunk, writes Patent Docs Blog. The difference, Myriad’s attorneys pointed out, was that “start and end points don’t exist” until discovered by the inventor.
The government offered the argument that changes accompanying the extraction of a natural element from the environment didn’t per se make something patentable.
Judge Moore asked about the “magic microscope” test pushed by former Acting Solicitor General Neal Katyal in the previous round of the case. In response, the government said that the “magic microscope,” which essentially said that any natural molecule potentially found inside a cell by a “magic microscope” would not be patent eligible, due to the fact that such molecules are products of nature, was merely a metaphor as opposed to a legal standard.
No ruling on the case is expected in the near term. But the case, which was remanded in light of the Prometheus v. Mayo decision, is being watched by patent attorneys across the nation.
How will the court apply — or will it apply — the Mayo case to the concept of gene patents?