SCOTUS Ending Term with Patent Decisions

Over the past several days, the United States Supreme Court has issued several important decisions that will impact the patent system.

First, on June 13, 2013, the Supreme Court issued a decision in Association of Molecular Pathology v. Myriad Genetics, which has sometimes been referred to as “ACLU v. Myriad” in recognition of the fact that it was the American Civil Liberties Union that was responsible for bringing the challenge in the district court and pursuing the matter through the judicial system.

In Myriad, Justice Thomas wrote for a nearly unanimous Court.  Only Justice Scalia wrote a brief separate opinion in which he concurred in part and concurred in the judgment.

The majority decision in Myriad is not long, and the first 10 pages are background. Despite not giving much detailed attention to the significant legal issues presented, the Supreme Court did manage to do real and serious harm to much of the biotechnology industry.

Justice Thomas summarized the Court’s decision by saying:

“[W]e hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.”

The decision has widely been reported as the Court recognizing that cDNA is patent eligible, but the ruling is far more nuanced. In fact, Justice Thomas specifically recognized that some cDNA is not patent eligible. He wrote:

“cDNA is not a ‘product of nature’ and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.”

I have spoken with a number of people who are in the biotech industry and they all seem to think this decision means that cDNA is patent eligible and I shouldn’t make too much out of Thomas specifically saying that at least some cDNA is not patent eligible. Personally, I think this is misplaced hope; we all know how the district courts will respond, and it won’t be to an expansive reading of patent eligibility. While the USPTO seems poised to say that cDNA is patent eligible, the fact that some has been determined not patent eligible will be used by challengers and likely successfully so. Further, it seems clear that Thomas is saying that if something is man-made but identical to what appears in nature, it is not patent eligible. This fundamentally undercuts the most important aspects of Chakrabarty and would effectively kill research into such important areas as artificially grown organs, which by their very nature must be identical to what is produced in nature to be transplanted into the human body, for example.

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Minnesota Pro bono Program Yields First Patent

On June 6, 2012, a patent was granted to a small inventor who received assistance with his patent application from a Minnesota  pilot pro bono program. Nick Musachio, an independent inventor in St. Paul, Minnesota, turned to the LegalCORPS Inventor Assistance Program after his initial patent application was rejected. With the professional expertise from attorneys at Fish & Richardson, Musachio was granted Patent Number 8157712 – a patent covering a “resistance exercise and physical therapy apparatus”.

This recent development is the first of what is expected to be many instances of small inventors contributing to the nation’s innovation via means of pro bono legal assistance. In the name of promoting innovation and equal access to the patent application process, the America Invents Act provides that the USPTO should “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” In Minnesota, the LegalCORPS Inventor Assistance Program was co-founded by three Minneapolis firms: Lindquist & Vennum; Meyer & Njus; and Patterson Thuente Christensen Pedersen. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patent Docs: Tomato Genome Determined – The recent news that the “entire genomic DNA sequence of the tomato (Solanum lycopersicum) has been deciphered” inspired this post. It takes an in depth look at the “interesting relationships between tomatoes and closely-related species.” No discussion of whether there will be a push to patent the tomato genetic sequence.

2) IP Watchdog: Mobile App Developers Gain Ally to Fight Patent Infringement – This post highlights the attempt to promote innovation within the mobile app industry. The world’s largest patent research community announced the formation of a partnership with a global trade organization for mobile software developers, which this post argues could in fact impact the mobile app industry in a positive way by benefiting the small businesses and individual entrepreneurs behind the technology. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patently-O: AIA Changes The Role of the Eastern District of Texas – This post brings attention to the article, 2011 Trends in Patent Case Filings, by James C. Pistorino and Susan Crane, in which they discuss the impact the AIA’s new joinder provisions has on the distribution of new lawsuit filings. The new joinder rules limit the ability of a plaintiff to join multiple unrelated defendants in a single action, which as a result, may allow courts to more easily transfer venue and thus shift filing focus away from the Eastern District of Texas.

2) Article One Partners Blog: Donald Duck, Patents, and Ping Pong Balls – This post entertains the notion that it may be possible to use a comic strip as a form of prior art. As per the post, “ ”Enabling” is a key facet of prior art.  On the other hand, if one can demonstrate obviousness, then a patent can be rendered moot.  In this case, Donald Duck may have succeeded in making the idea obvious.”

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Commentary on Mayo v. Prometheus

On March 20, 2012, the U.S. Supreme Court issued a unanimous decision in Mayo Collaborative Services v. Prometheus Labs., Inc., reversing the Court of Appeals for the Federal Circuit, holding that the patented Prometheus claim methods were invalid as they pertained to ineligible subject matter. The issue before the Court was whether the claims did more than simply describe laws of nature. Justice Breyer wrote the Court’s decision and emphasized the specific question, ”Do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?”  The underlying policy concern was whether such patents would inhibit  future innovation. As stated in the Court’s decision,

…there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to “apply the natural law,”or otherwise forecloses more future invention than the underlying discovery could reasonably justify. The patent claims at issue implicate this concern.

In order to better understand the complexities of the Mayo Collaborative Services v. Prometheus Labs., Inc. decision, we have collected articles written by patent practitioners and Practice Center contributors about the case. Check out these fantastic case summaries and opinion pieces: (more…)