___ U.S. ___ (2013), 12-398, Association for Molecular Pathology v. Myriad Genetics, Inc.

Docket Nº:12-398
Citation:___ U.S. ___, 133 S.Ct. 2107
Opinion Judge:Thomas Justice.
Party Name:ASSOCIATION FOR MOLECULAR PATHOLOGY ET AL. v. MYRIAD GENETICS, INC., ET AL.
Attorney:Christopher A. Hansen, Glen wood, MI), for Petitioners. Donald B. Verrilli, Jr., Solicitor General, for the United States as amicus curiae, by special leave of the court, supporting neither party. Gregory A. Castanias, Washington, DC, for Respondents. Daniel B. Ravieher, Sabrina Y. Hassan, Public...
Judge Panel:THOMAS, J., delivered the opinion of the Court, in which ROBERTS, C.J., and KENNEDY, GINSBURG, BREYER, ALITO, SOTOMAYOR, and KAGAN, JJ., joined, and in which SCALIA. J., joined in part. SCALIA, J., filed an opinion concurring in part and concurring in the judgment. JUSTICE Scalia, concurring in p...
Case Date:June 13, 2013
Court:United States Supreme Court
 
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Page ___

___ U.S. ___ (2013)

133 S.Ct. 2107

ASSOCIATION FOR MOLECULAR PATHOLOGY ET AL.

v.

MYRIAD GENETICS, INC., ET AL.

No. 12-398

United States Supreme Court

June 13, 2013

Argued April 15, 2013

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

[133 S.Ct. 2109] Syllabus [*]

Each human gene is encoded as deoxyribonucleic acid (DNA), which takes the shape of a "double helix." Each "cross-bar" in that helix consists of two chemically joined nucleotides. Sequences of DNA nucleotides contain the information necessary to create strings of amino acids used to build proteins in the body. The nucleotides that code for amino acids are "exons, " and those that do not are "introns." Scientists can extract DNA from cells to isolate specific segments for study. They can also synthetically create exons-only strands of nucleotides known as composite DNA (cDNA). cDNA contains only the exons that occur in DNA, omitting the intervening introns.

Respondent Myriad Genetics, Inc. (Myriad), obtained several patents after discovering the precise location and sequence of the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer. This knowledge allowed Myriad to determine the genes' typical nucleotide sequence, which, in turn, enabled it to develop medical tests useful for detecting mutations in these genes in a particular patient to assess the patient's cancer risk. If valid, Myriad's patents would give it the exclusive right to isolate an individual's BRCA1 and BRCA2 genes, and would give Myriad the exclusive right to synthetically create BRCA cDNA. Petitioners filed suit, seeking a declaration that Myriad's patents are invalid under 35 U.S.C. §101. As relevant here, the District Court granted summary judgment to petitioners, concluding that Myriad's claims were invalid because they covered products of nature. The Federal Circuit initially reversed, but on remand in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S.Ct. 1289, 182 L.Ed.2d 321, the Circuit found both isolated DNA and cDNA patent eligible.

Held:

A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring. Pp. 2115-2120.

(a) The Patent Act permits patents to be issued to "[w]hoever invents or discovers any new and useful . . . composition of matter, " §101, but "laws of nature, natural phenomena, and abstract ideas" " 'are basic tools of scientific and technological work' " that lie beyond the domain of patent protection, Mayo, supra, at __, 132 S.Ct. 1289. The rule against patents on naturally occurring things has limits, however. Patent protection strikes a delicate balance between creating "incentives that lead to creation, invention, and discovery" and "imped[ing] the flow of information that might permit, indeed spur, invention." Id., at __, 132 S.Ct. 1289. This standard is used to determine whether Myriad's patents claim a "new and useful . . . composition of matter, " §101, or claim naturally occurring phenomena. Pp. 2115-2116.

(b) Myriad's DNA claim falls within the law of nature exception. Myriad's principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes. Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144, is central to the patent-eligibility inquiry whether such action was new "with markedly different characteristics from any found in nature, " id., at 310, 100 S.Ct. 2204. Myriad did not create or alter either the genetic information [133 S.Ct. 2110] encoded in the BRCA1 and BRCA2 genes or the genetic structure of the DNA. It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry. See Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588. Finding the location of the BRCA1 and BRCA2 genes does not render the genes patent eligible "new . . . composition[s] of matter, " §101. Myriad's patent descriptions highlight the problem with its claims: They detail the extensive process of discovery, but extensive effort alone is insufficient to satisfy §101's demands. Myriad's claims are not saved by the fact that isolating DNA from the human genome severs the chemical bonds that bind gene molecules together. The claims are not expressed in terms of chemical composition, nor do they rely on the chemical changes resulting from the isolation of a particular DNA section. Instead, they focus on the genetic information encoded in the BRCA1 and BRCA2 genes. Finally, Myriad argues that the Patent and Trademark Office's past practice of awarding gene patents is entitled to deference, citing J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508, a case where Congress had endorsed a PTO practice in subsequent legislation. There has been no such endorsement here, and the United States argued in the Federal Circuit and in this Court that isolated DNA was not patent eligible under §101. Pp. 2116 - 2119.

(c) cDNA is not a "product of nature, " so it is patent eligible under §101. cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. Its creation results in an exons-only molecule, which is not naturally occurring. Its order of the exons may be dictated by nature, but the lab technician unquestionably creates something new when introns are removed from a DNA sequence to make cDNA. Pp. 2119-2120.

(d) This case, it is important to note, does not involve method claims, patents on new applications of knowledge about the BRCA1 and BRCA2 genes, or the patentability of DNA in which the order of the naturally occurring nucleotides has been altered. Pp. 2119-2120.

689 F.3d 1303, affirmed in part and reversed in part.

Christopher A. Hansen, Glen wood, MI), for Petitioners.

Donald B. Verrilli, Jr., Solicitor General, for the United States as amicus curiae, by special leave of the court, supporting neither party.

Gregory A. Castanias, Washington, DC, for Respondents.

Daniel B. Ravieher, Sabrina Y. Hassan, Public Patent Foundation (PUBPAT), Benjamin N. Cardozo, School of Law, New York, NY, Christopher A. Hansen, Counsel of Record, Sandra S. Park. Lenora M. Lapidus, Steven R. Shapiro, New York, NY, for Petitioners.

THOMAS, J., delivered the opinion of the Court, in which ROBERTS, C.J., and KENNEDY, GINSBURG, BREYER, ALITO, SOTOMAYOR, and KAGAN, JJ., joined, and in which SCALIA. J., joined in part. SCALIA, J., filed an opinion concurring in part and concurring in the judgment.

OPINION

Thomas Justice.

Respondent Myriad Genetics, Inc. (Myriad), discovered the precise location and [133 S.Ct. 2111] sequence of two human genes, mutations of which can substantially increase the risks of breast and ovarian cancer. Myriad obtained a number of patents based upon its discovery. This case involves claims from three of them and requires us to resolve whether a naturally occurring segment of deoxyribonucleic acid (DNA) is patent eligible under 35 U.S.C. §101 by virtue of its isolation from the rest of the human genome. We also address the patent eligibility of synthetically created DNA known as complementary DNA (cDNA), which contains the same protein-coding information found in a segment of natural DNA but omits portions within the DNA segment that do not code for proteins. For the reasons that follow, we hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring. We, therefore, affirm in part and reverse in part the decision of the United States Court of Appeals for the Federal Circuit.

I

A

Genes form the basis for hereditary traits in living organisms. See generally Association for Molecular Pathology v. United States Patent and Trademark Office, 702 F.Supp.2d 181, 192-211 (SDNY 2010). The human genome consists of approximately 22,000 genes packed into 23 pairs of chromosomes. Each gene is encoded as DNA, which takes the shape of the familiar "double helix" that Doctors James Watson and Francis Crick first described in 1953. Each "cross-bar" in the DNA helix consists of two chemically joined nucleotides. The possible nucleotides are adenine (A), thymine (T), cytosine (C), and guanine (G), each of which binds naturally with another nucleotide: A pairs with T; C pairs with G. The nucleotide cross-bars are chemically connected to a sugar-phosphate backbone that forms the outside framework of the DNA helix. Sequences of DNA nucleotides contain the information necessary to create strings of amino acids, which in turn are used in the body to build proteins. Only some DNA nucleotides, however, code for amino acids; these nucleotides are known as "exons." Nucleotides that do not code for amino acids, in contrast, are known as "introns."

Creation of proteins from DNA involves two principal steps, known as transcription and translation. In transcription, the bonds between DNA nucleotides separate, and the DNA helix unwinds into two single strands. A single strand is used as a template to create a complementary ribonucleic acid (RNA) strand. The nucleotides on the DNA strand pair naturally with their counterparts, with the exception that RNA uses the nucleotide base uracil (U) instead of thymine (T). Transcription results in a single strand RNA molecule, known as pre-RNA, whose nucleotides form an inverse image of the DNA strand from which it was created. Pre-RNA still contains nucleotides corresponding to both the exons and introns in the DNA molecule. The pre-RNA is then naturally "spliced" by the physical removal of the introns. The resulting product is a strand of RNA that contains...

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