67 Stan. L. Rev. Online 1 (2014-2015)

handle is hein.journals/slro67 and id is 1 raw text is: 



                         67 STAN. L. REv. ONLINE  1
                                 May 5, 2014




  PRELIMINARY INJUNCTIONS POST-MAYO

                           AND MYRIAD


                           Jacob  S. Sherkow*

    The  Supreme  Court has recently expressed increased interest in patent eli-
gibility, or patentable subject matter, the doctrine that limits the types of inven-
tions eligible for patenting. Its two decisions, Mayo Collaborative Services v.
Prometheus  Laboratories, Inc.,1 in 2012, and Association for Molecular Pa-
thology v. Myriad   Genetics, Inc.,2 in 2013, represented the first broad re-
strictions on patentable subject matter in over thirty years.3 And later this term,
the Court will decide yet another patent eligibility case: Alice Corp. v. CLS
                   4
Bank  International. While  the effects of the Mayo and Myriad  decisions on
patent law have been  widely discussed, they have recently played a fascinat-
ing-and   less explored-role in another area of law: preliminary injunctions. In
several recent patent cases, the contours of Mayo and Myriad have driven dis-
trict courts to deny preliminary injunctions on patent eligibility grounds. This
has subtly altered the texture of the preliminary injunction standard in patent
infringement disputes, causing district courts to place greater emphasis on dif-
ficult, scientifically complex questions of patent eligibility at nascent stages of
litigation. While time-and appeals-will  tell whether this change remains via-
ble, this shift in the preliminary injunction standard provides a fascinating,
practical case study as to one law: the law of unintended consequences.

                             MAYO  AND  MYRIAD

    In Mayo,  the asserted patents claimed a method for adjusting the dosage of
thiopurine drugs-useful  in treating gastrointestinal disease but sometimes tox-
ic-based   on specific concentrations of the drugs'  metabolites in patients'


      * Fellow, Stanford Law School, Center for Law and the Biosciences. Thanks to my
excellent editors at the Stanford Law Review for their constructive comments.
      1. 132 S. Ct. 1289 (2012).
      2. 133 S. Ct. 2107 (2013).
      3. In 2010, the Court decided another patentable subject matter case-Bilski v. Kap-
pos, 130 S. Ct. 3218 (2010)-although the immediate effect of that decision has been un-
clear. See generally Mark A. Lemley et al., Life After Bilski, 63 STAN. L. REv. 1315 (2011)
(discussing the uncertain future effect of Bilski). But prior to Bilski, the Supreme Court had
not restricted patentable subject matter since Parker v. Flook, 437 U.S. 584 (1978), thirty-
two years earlier.
      4. 717 F.3d 1269 (Fed. Cir.), cert. granted, 134 S. Ct. 734 (2013) (No. 13-298).


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