At your invitation, Hank, I’ll engage in the risky business of predicting the future:

1. Given the interest in the Myriad litigation, I would not be surprised if the Federal Circuit decided to hear it en banc. By rehearing the case, the full Federal Circuit can refine the application of Prometheus, making the case less attractive for the Supreme Court to take. Recent cases heard en banc by Federal Circuit, such as Ariad v. Lilly and Therasense v. Becton Dickinson, suggest this might be the best way to limit the application of Prometheus and avoid involving the Supreme Court any further.

2. Assuming the decision is not changed by en banc rehearing, I would hate to be in Myriad’s position. Considering that Prometheus was decided 9-0, and the strong public sentiments about this case (see the Solicitor General’s amicus brief), there’s a risk that the Court might alter Chakrabarty in a way that would fundamentally change the eligibility test for the worst.

1. Given the interest in the Myriad litigation, I would not be surprised if the Federal Circuit decided to hear it en banc. By rehearing the case, the full Federal Circuit can refine the application of Prometheus, making the case less attractive for the Supreme Court to take. Recent cases heard en banc by Federal Circuit, such as Ariad v. Lilly and Therasense v. Becton Dickinson, suggest this might be the best way to limit the application of Prometheus and avoid involving the Supreme Court any further.

2. Assuming the decision is not changed by en banc rehearing, I would hate to be in Myriad’s position. Considering that Prometheus was decided 9-0, and the strong public sentiments about this case (see the Solicitor General’s amicus brief), there’s a risk that the Court might alter Chakrabarty in a way that would fundamentally change the eligibility test for the worst.

1. I’d be surprised if AMP was re-argued en banc. Of the last two major patentability cases to go to the Court, KSR was not reheard en banc, and Bilski was a sua sponte en banc hearing in the first instance. Because AMP is the result of litigation, as opposed to an appeal of the BPAI, it has more in common with the former than the latter. For those non-panel Judges who agree with the decision, they may want to leave well enough alone. And for those non-panel Judges who disagree with the decision, they may want to provoke certiorari earlier–holding another hearing at the primary appellate level would only slow things down. Given the Supreme Court’s penchant for reversing the Federal Circuit, I think only a small minority of Judges would want to be on an en banc panel whose opinion–regardless of which way it comes out–will certainly be criticized by the Court.

2. Somewhere in between. I think the Court will affirm the Federal Circuit’s invalidation of Myriad’s method claims but take issue with the way the appellate court dealt with the distinctions between DNA types. As Judge Moore’s concurrence seems nuanced–something the Supreme Court likes in patent law–I wouldn’t be surprised if the majority opinion from the Court ends up sounding similar. I do think the Court will make much of the structure/function distinction that Judge Lourie seems to think is important, i.e., that covalent cleavages matter more than sequence.