Diagnostic claims post-Mayo and Myriad: the pile-up begins

摘要

Just as the initial collision of two or three vehicles on a foggy freeway can trigger a multicar pile-up that jams traffic for miles, so have recent decisions by the Supreme Court and the Federal Circuit suddenly thrown up a road block to a wide variety of conventional diagnostic claims that are based on the discovery that marker 'a' correlates to medical condition 'b'. These decisions were Association for Molecular Pathology v. United States PTO(Myriad) [1] and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Mayo) [2]. The pile-up has begun. In PerkinElmer, Inc. v. Intema, Ltd (PerkinElmer) [3], a panel of the Federal Circuit reversed the district court and invalidated all of the claims of US Patent No. 6573103 [101] as patent ineligible ([3] at 16) in view of Myriad and Mayo. The claims were found to both 'claim a law of nature' and to recite 'the mental process of comparing data to determine a risk level' ([3] at 11).