Patent-Eligible Subject Matter in Biotech Should Recite More Than a "Telescope"

[...]despite the statutory language (and the language in the power the people grant to Congress in Article I, Section 8, Clause 8 of the U.S. Constitution), e.g., "or discovers," the U.S. Supreme Court has carved out a number of judicial exceptions to the provisions of Section 101, namely laws of nature, natural phenomenon and abstract ideas, which are not patent-eligible subject matter.3 Although laws of nature and natural phenomenon are discoverable, the Supreme Court is of the view that no patent can issue on their discovery because the "manifestations of laws of nature" are "part of the storehouse of knowledge," "free to all men and reserved exclusively to none. The U.S. Court of Appeals for the Federal Circuit has consistently held claims reciting diagnostic or detection methods patent-ineligible because the claims are merely directed to the observation of the natural phenomenon or laws of nature.7 In contrast, the Federal Circuit has held certain claims directed to methods of preparation or production to be patent-eligible at the first prong of Step 2A because the claims at issue were not directed to a judicial exception.8 ABBOTT LABORATORIES AND NATURAL PHENOMENA Abbott Laboratories presents another situation in which the law of nature and natural phenomenon judicial exceptions have come to the forefront in the analysis of patent-eligible subject matter. The patent at issue in Abbott Laboratories, U.S. Patent No. 7,205,101 ("'101 Patent"), and specifically claim 7 thereof, is directed to a method for replicating DNA specific for HIV Abbott Laboratories brought a declaratory judgment action against Grifols Diagnostic Solutions Inc. and other joint owners of the patent, asserting that the claims of the '101 Patent were invalid, including asserting that the '101 Patent claims fail to comply with 35 U.S.C. 101 due to claiming patent-ineligible subject matter. The court analogized the claim at issue to those claims at issue in Illumina and CellzDirect, indicating that claim 7 was more akin to a patent-eligible method of preparation or production. [...]the court found that Abbott, in denying its motion to dismiss, did not demonstrate that claim 7 of the '101 Patent is directed to patent-ineligible subject matter, holding that claim 7, directed to a method of producing or replicating HIV DNA, was not drawn to a natural phenomenon, ending the Alice/Mayo inquiry at the first prong of revised Step 2A in favor of finding patent-eligible subject matter.