Myriad quizzed by Supreme Court justices

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Myriad quizzed by Supreme Court justices

In a landmark case with sweeping repercussions for medical research that's being closely watched around the globe, the US Supreme Court on Monday heard oral arguments on the patent eligibility of human genes

Association for Molecular Pathology v Myriad Genetics hinges on whether the building blocks of life that form the human genome are also intellectual property.

A coalition of plaintiffs that includes researchers, patients, and breast cancer and women's health groups argue that genetic material is a "product of nature" that is ineligible for patents.

Utah-based Myriad, whose supporters include the Biotechnology Industry Organization (BIO) and the Coalition for 21st Century Medicine, maintains that genetic material removed from the body through "invented" methods can be patented because it is no longer naturally occurring.

The lawsuit was brought by the ACLU and the Public Patent Foundation, a non-profit legal group affiliated with the Benjamin N Cardozo School of Law.

A District Court ruled in 2010 that Myriad’s patents related to the isolation of breast and ovarian cancer genes BRCA 1 and BRCA 2 were invalid. But the Federal Circuit reversed the decision in 2011 in a 2-1 decision.

During Monday's arguments, Gregory A Castanias, the attorney representing Myriad Genetics and head of Jones Day’s Federal Circuit practice, quickly found himself on the defensive. Justice Sonia Sotomayor immediately interrupted his opening remarks to express that it's "very, very difficult to see how you can patent a sequential numbering system (created) by nature."

Sotomayor has always been under the impression that to obtain a patent one must "add to what nature does”, she noted. "There was invention," Castanias responded, "in the decision of where to begin the gene and where to end the gene."

Justice Stephen Breyer lectured that if someone discovers a "satisfying new process to extract sap" from a tree or plant in the Amazon or discovers how to treat cancer with the sap, they can patent those things.

"What you can't patent is the sap itself," he said, underscoring the importance of keeping products of nature free from patents. "That's the framework that I'm bringing to the case," he added.

Drawing a comparison with a baseball bat that was "invented”, Chief Justice John Roberts suggested that Myriad didn't have to invent any DNA strands – it just snipped them. "You wouldn't even know where to snip without the Myriad invention," Castanias countered. Elena Kagan, the newest justice, asked whether another major scientific breakthrough, the first isolation of a chromosome, could have been patented. Castanias said “yes” with a caveat – if the chromosome “had a specific utility”.

Earlier in the proceedings, Justice Ruth Bader Ginsburg asked Christopher A Hansen, the attorney for the Association for Molecular Pathology, to explain the difference between a patent on aspirin or whooping cough medication and Myriad's patents.

"This court has used the example of gold," said Hansen, senior national staff counsel for the ACLU. "You can't patent gold because it's a product of nature." He later warned: "When you lock up a product of nature, it prevents industry from innovating and making new discoveries."

During an exchange with Hansen, Justice Antonin Scalia suggested that companies such as Myriad might lack the incentive to make significant financial investments in genetic research if they can't patent DNA. When Hansen surmised that companies would still invest to compete for Nobel prizes and recognition, Justice Kagan said she was hoping for a different answer: that companies would still conclude that such investments were worthwhile business decisions.

The Court is expected to issue its judgment in the case in the next few months. More information on the dispute is available on Managing IP's dedicated topic page.

more from across site and SHARED ros bottom lb

More from across our site

Moore & Van Allen hires former Teva counsel Larry Rickles to help expand the firm’s life sciences capabilities
Canadian law firms should avoid ‘tunnel vision’ as exclusive survey reveals client dissatisfaction with risk management advice and value-added services
In major recent developments, the CoA ruled on director liability for patent infringement, and Nokia targeted Paramount at the UPC and in Germany
Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Stobbs stands accused of interfering with the administration of justice after Brandsmiths’ client was subjected to an interim injunction for unjustified threats
The firm, known for its prosecution expertise, discusses its plans following the appointment of a UK-based patent litigation head and two new partners
Ed White at Clarivate provides an exclusive insight into the innovation power clusters reshaping Europe and the Middle East’s IP landscape, and why quality is the new currency of invention
In the first in a new podcast series celebrating the tenth anniversary of IP Inclusive, we look back at the network’s origins and discuss its mission
Gift this article