Last week, the US Supreme Court ruled unanimously in Association of Molecular Pathology v. Myriad Genetics, 569 U.S. 12-398 (2013) that isolated DNA does not meet the Section 101 patentable subject matter requirement, while cDNA is eligible under Section 101. For nearly 2 decades, Myriad’s patent assets protected its dominant market share for BRCA mutation testing in the US. Reaction after the decision points to few clear winners. Myriad still holds 24 patents on BRCA testing, and has the door open to invest in future cDNA inventions. Competing bio-genetics firms claim they can now offer less expensive BRCS testing. And now, even opponents of software patents want a piece of the pie.
 
Because of comments by Justice Thomas, who wrote for the majority, on DNA being naturally occurring phenomena that are not being patentable under the product of nature doctrine, some observers went as far as to tie the Section 101 issue in Myriad to the patent eligibility of software. Before applying the product of nature doctrine of Myriad beyond the scope of the decision, it is important to separate the "hype and hyperbole" from what the Court actually held.
 
The Myriad Court invalidated 5 Myriad patents that cover the firm’s $4,000 BRCA diagnostic testing for genetic mutations linked to breast and ovarian cancer. The Court determined DNA is a product of nature, rendering it unpatentable under Section 101. Its criticized Myriad’s patent claims as focusing on natural genetic information encoded in isolated DNA rather than chemical compounds or changes derived from such DNA. In contrast, synthetically engineered DNA, complementary DNA (cDNA), is not naturally occurring and patent eligible under Section 101. A lab technician “creates something new” with sufficiently long strands of cDNA distinguishable from the DNA from which it is derived.
 
In applying the Myriad decision to software, would 1s and 0s, the basis of software code, be construed under the DNA or cDNA analysis of Myriad? In our opinion and that of many others, interpreting Myriad as advocating the comparison of DNA to software code for purposes of Section 101 is to view the Myriad decision and its implications as farther reaching than they are. The Supreme Court did not issue a ground breaking decision in Myriad. Few found the decision even surprising. Weil, Gotshal patent lawyer, Ed Reines, who chairs the Advisory Council for the Federal Circuit, stated that the decision simply “doesn’t matter.” It may not significantly change the DNA patent landscape, as the USPTO has been inclined not to issue DNA patents in recent years. Harry Surden, Associate Professor of Law at the University of Colorado Law School, observed the limited reach of Myriad:
 
“I don’t believe that the Myriad case opened the door at all for categories of patent that are so different from DNA patents… The Myriad decision was very narrowly focused upon patents on isolating DNA sequences. … Although both DNA patents and software patents are evaluated at a high level under …Section 101 of the patent code… at a lower level, they involve very different considerations and implications.”
 
Opponents of software patents, and patents in general, may argue Myriad is a linchpin for “software patent holders to take notice” for fear of losing their patents in future court decisions on Section 101. However, these views are more wishful thinking than solid analysis and ignore the fact the Court gave no indication it decided Myriad with an eye towards guiding future software patent cases. More specifically, it did not indicate that it had cast aside its reluctance, articulated by Justice Kennedy in Bilski v. Kappos, 561 U.S. ___ 2010 WL 2555192 (Jun. 28, 2010), to address the patentability of software. Had the Court wanted to communicate that it took the Myriad cases as an opportunity to express willingness to consider the Section 101 software patent issue, it would have done so.
 
For now, software patents are outside the reach of Myriad, with association between Myriad and the patentability of software too attenuated. We will probably need another decision from the high court to bring some clarity on that subject. In the meantime, many opponents to software patents will continue to contend that the Myriad case is a precursor of more good things to come. Only time will tell if they are right.