The Prior Art

In ACLU Suit, Judge Rules Myriad's Genetic Patents Invalid

Last year, several doctors' groups, together with the ACLU and Public Patent Foundation, filed a lawsuit seeking to invalidate patents on two genes related to breast cancer and owned by Utah-based Myriad Genetics. The plaintiffs, who can be viewed as arguing more broadly against all genetic patents, claimed in the suit that such patents are not only illegal under the nation's patent laws, but also unconstitutional.

On Monday afternoon, the plaintiffs won. Ruling on summary judgment motions filed by both sides, New York federal district court Judge Robert Sweet ruled on summary judgment invalidated Myriad's patents on the BRCA1 and BRCA2 genes. In his 152-page opinion [PDF], Sweet wrote that the patents in question cover parts of the natural world and therefore don't conform to section 101 of U.S. patent laws, which those govern what qualifies as patentable subject matter.

Sweet agreed with the ACLU's basic argument that the "isolated" DNA that Myriad claimed to have patented is still a product of nature, and can't be covered by patents. He wrote: "It is concluded that DNA's existence in an 'isolated' form alters neither this fundamental quality of DNA as it exists in the body nor the information it encodes. Therefore, the patents at issue directed to 'isolated DNA' containing sequences found in nature are unsustainable as a matter of law and are deemed unpatentable subject matter."

Patent Litigation Weekly: PubPat and ACLU Aim to Take Down Gene Patents

This week, TPA takes a break from its usual surfing through federal court dockets in search of trolls and such to consider a potentially landmark suit against the PTO.

• Association for Molecular Pathology, et al. v. United State Patent and Trademark Office, et al., 09-cv-04515, S.D. New York, filed 5/12/2009.

For nearly 30 years, the U.S. Patent and Trademark Office has been granting patents on isolated portions of the human genome. That practice has resulted in thousands of human genes—as much as 20 percent of all human genetic material—being patented.

This week, genetic patents came under a full-bore legal assault when groups representing more than 100,000 doctors and researchers, working together with lawyers at the Public Patent Foundation and the American Civil Liberties Union, filed suit against the PTO and Myriad Genetics, a Utah-based genetic testing company.  It's a lawsuit two years in the making.

The suit's immediate goal is to invalidate seven patents that give Myriad the sole rights to administer tests and do research connected to a pair of genes closely connected to breast and ovarian cancer, BRCA-1 and BRCA-2 (pronounced "bracka-one" and "bracka-two.") Should the plaintiffs prove successful, though, their strike against the PTO would have far-reaching implications.

Dan Ravicher, the patent lawyer at the Public Patent Foundation who is working with the ACLU on the case, puts it bluntly:  "The intention is to take down patents on human genes."

FTC talks about "Public Notice" function of patents—not that it exists or anything

The Federal Trade Commission came out to Berkeley this week to talk shop with some patent experts, convening several panels Monday and Tuesday about "The Evolving IP Marketplace." The Prior Art dropped in on a panel discussing the "public notice" function of patents—that is, the idea that published patents put the public on notice as to what we're not allowed to use, sell, or manufacture without a patent-holder's consent.

The most notable part of the discussion was that no one ever really got around to mentioning whether patents provide any kind of meaningful public notice at all. When FTC attorney Bill Adkinson, who moderated the panel, began the discussion on claim construction with a quote from longtime Federal Circuit Judge Giles Rich, who was instrumental in crafting the modern U.S. patent laws, he had to urge some panelists to stifle their cackles:

"Judge Rich said the function of claims is to enable everyone to know, without going through a lawsuit, what infringes the claims and what does not."

Congress to fix problem with patent judge appointments

The sky is officially not falling. The administrative law judges who decide patent appeals got a lot of attention in May, a few weeks after an Oregon chipmaker, Translogic Technology, had challenged the constitutionality of their appointments.

Translogic wants to rescue its $86 million patent infringement verdict, which was overturned when a patent appeals board found its patent invalid for obviousness. The company petitioned the Supreme Court, waving a paper by noted patent scholar John Duffy that raised the constitutional question.

But the folks I talked to about the issue didn't seem to think it was potentially "cataclysmic," as the New York Times reported in May; I wrote a story saying as much in our last issue, quoting a couple of patent litigators who said that Duffy's discovery, while a real problem, was a technicality that should be easily fixed.

Sure enough, a legislative fix is now on the way, in the form of H.R. 6362, sponsored by the chairman of the House IP committee, Howard Berman, D-CA. The bill will require the Secretary of Commerce to make these appointments in the future, together with the Director of the USPTO. It also creates a retroactive defense to any challenges of the 40-odd judges who were appointed "illegally," IPO Daily News reported on Friday.

Looks like this one can be filed under "no big deal."

 

Oral arguments for In re Bilski; Patent Office will appeal Tafas v. Dudas

Patent news for May 8, 2008.

• Tafas v. Dudas will be appealed: When the Patent Office tried to put some limits on how many times patent applicants can come back wielding continuation applications, and how many claims can be put in a single patent, a large chunk of the patent bar revolted. Big pharma led a counterstrike, sued to stop the new PTO rules from taking effect, and won. Now the PTO has said they will appeal. Is it true that "USPTO = gluttons for punishment," as one commentator opined at Patently-O?

The battle lines here are similar to the patent reform debate: tech companies say the patents are needed to prevent abuses like the Lemelson “submarine patents,” which remained hidden  for decades and then were used to sue more or less the whole economy.

• Last but certainly not least, the Federal Circuit will hear arguments today in In Re Bilski, a potentially landmark patent case where a small Pennsylvania “financial engineering” company founded by Rand Warsaw and Bernard L. Bilski is trying to get a wide-ranging patent on hedging weather risk. Warsaw and Bilski have been accused of ripping off consumers by state authorities in Minnesota, as I reported last month. Looking forward to hearing the oral arguments.

Bilski amicus briefs are collected at Patently-O.
A critical history of software and business method patents from Mike Masnick at Techdirt.