By Kevin E. Noonan --
Once again, it should come as no surprise that the American Civil Liberties Union (ACLU) and the Public Patent Foundation (PubPat) filed a petition for certiorari with the Supreme Court yesterday. This time, three questions were presented:
1. Are human genes patentable?
2. Did the court of appeals err in upholding a method claim by Myriad that is irreconcilable with this Court's ruling in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)?
3. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court's decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad's "active enforcement" of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally and directly threatened with an infringement action?
The basis for the petition can be gleaned (at first glance) from the listing of the reasons for granting the writ:
I. THE QUESTION OF WHETHER HUMAN GENES AND THE INFORMATION THEY CONVEY ARE PATENTABLE IS OF PARAMOUNT IMPORTANCE TO THE FUTURE OF PATENT LAW, THE ADVANCEMENT OF MEDICAL SCIENCE, AND THE HEALTH OF PATIENTS.
II. PATENTS ON "ISOLATED" DNA ARE INVALID UNDER THIS COURT'S SECTION 101 JURISPRUDENCE AND THE U.S. CONSTITUTION.
III. THE METHOD CLAIM UPHELD BELOW IS INCONSISTENT WITH MAYO AND SHOULD HAVE BEEN REJECTED
IV. BY HOLDING THAT PETITIONERS LACKED STANDING UNLESS THEY WERE PERSONALLY THREATENED BY MYRIAD, THE FEDERAL CIRCUIT IMPOSED A RIGID STANDING REQUIREMENT CONTRARY TO THIS COURT'S APPROACH
The first reason once again reiterates the plaintiffs (willful) conflation of the gene itself (patentable under current law) and the information it encodes (which is not patentable and is freely used by all). The second reason presents specific grounds for the Supreme Court to overturn the Federal Circuit, insofar as the appellate court's grounds for reversing the District Court unconstitutionally extended the scope of patent eligibility under Section 101.
The second Question Presented is treated only briefly but appears to be based on the incorrect notion asserted during oral argument that the cells used in the method are "conventional products widely available for purchase."
The third Question Presented, and the reasons for it, are a bit curious considering that the Federal Circuit found that at least one named plaintiff, Dr. Harry Ostrer, had standing to bring the lawsuit. But it is clear that plaintiffs and their legal representatives are interested in not only reducing the scope of patent eligibility but in expanding the scope of declaratory judgment jurisdiction, so that members of the public affected by a patent but not threatened by suit would have standing. In many ways, this argument is much more threatening to an effective patent regime in this country, since garnering Supreme Court agreement would make the recent spate of patent litigation (that has raised so many concerns across all technology sectors) look benign (for example, if every consumer who purchases a patented product had standing to challenge the patent).
Patent Docs will provide more in depth coverage of the petition after taking time to consider its implications more thoroughly.