Implications for Medtech The impact of Prometheus already is being felt. Less than one week after t

Implications for Medtech
The impact of Prometheus already is being felt. Less than one week after the March 20 Prometheus decision, the Supreme Court addressed another much-watched patent case regarding the patentability of isolated DNA of human genes in Association for Molecular Pathology v. Myriad Genetics. On March 26, the Supreme Court granted certiorari, vacated the July 2011 Federal Circuit judgment upholding the patentability of isolated DNA patent claims, and remanded Myriad for further consideration in light of Mayo v. Prometheus. On July 20, the Federal Circuit will hear oral arguments in the much-anticipated Myriad case. Now, experts are lined up on both sides of the fence as to whether Myriad’s patents will be found to cover patentable subject matter or will be found invalid.

The district courts already have applied the Prometheus decision to several patent infringement cases across the country. On March 21, in Nazomi Communications Inc. v. Samsung Telecommunications, the District Court for the Northern District of California found that the Prometheus decision did not compel invalidating patent claims to methods of executing instructions in the telecommunications industry because these claims recited detailed steps that confined the claims to a specific, useful application.

An opposite result was found in Smartgene Inc. v. Advanced Biological Laboratories on March 30. In the Smartgene case, the District Court for the District of Columbia found that methods for selecting a therapeutic treatment regimen were directed to abstract ideas, and thus not patentable, because the patent claims simply recited abstract ideas in combination with “routine, conventional activity already engaged in by the scientific community.”

Finally, on March 21, one day after the Prometheus decision, the U.S. Patent and Trademark Office (USPTO) issued a memorandum to its patent examiners providing preliminary guidance regarding the Prometheus decision.

While these district court cases and the USPTO memorandum provide some early insight into the application of the Prometheus decision, the full impact of the decision will not be known for many years to come.