Tuesday, November 03, 2009

Ruling in Myriad/BRCA case: can anyone challenge any patent at any time?

In July, IPBiz noted text within one defendant's brief in the case brought by the ACLU and others against Myriad and the USPTO:

"If the plaintiffs in this case have standing, then virtually anyone can challenge any patent at any time."

Just last week, on 26 Oct 09, LBE heard one of the defendants' attorneys assert they were going to win on the standing issue.

Less than one week later, on Nov. 1, Judge Robert W. Sweet noted: "Defendants' motion to dismiss the complaint is denied," finding standing for suit as to ALL defendants.

The technology relates to BRCA and relevant patents include US 5,747,282, 5,693,473, 5,709,999, 5,710,001, 5,753,441, and 6,033,857. The plaintiffs assert patentability issues under 35 USC 101 because the genes in question are products of nature.

Judge Sweet cites to Marbury v. Madison. 5 US 137 (1803), as well as to Fitzgerald v. Barnstable, 129 S. Ct. 788 (2009).

As to the USPTO, Judge Sweet found that the plaintiffs had standing to assert constitutional claims for which the Patent Act provides no remedy. The plaintiffs assert that issuance of gene patents by the USPTO is unconstitutional.

As to the people in Utah, Ex parte Young, 209 US 123 (1908) gets cited.

As to Rule 12, Judge Sweet cites to Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009). There is a finding that ownership in patent rights to genes can (theoretically) violate the First Amendment. This in turn is asserted to lead to a violation of Article I, Section 8, Clause 8 as to "promoting progress." This is a quirky argument in that the USPTO's grant of a patent, made pursuant to power given to Congress under Article I Section 8, is found to violate Article I Section 8, because the grant of the patent didn't actually promote the progress. Article I section 8 gives Congress the power to legislate what it wants in the area of patents. Congress could, if Congress decided, not have a patent system at all, just as Congress currently does not grant letters of marque. The First Amendment grants freedom of speech, and the patent system, which makes knowledge of inventions publicly available, does not foreclose people from speaking about the knowledge in the patents.

In the end, the constitutionality argument is strained, and the proper course would have been to pursue an invalidity argument (under 35 USC 101 or whatever) through the normal channels. In theory, "anyone" could make the type of argument outlined here, saying "patent X" keeps me from "speaking" about Y, which inhibits my first amendment rights, which therefore does NOT promote the progress.

See post on Patently-O concerning Association for Medical Pathology & ACLU v. USPTO & Myriad, 09-cv-4515 (S.D.N.Y. 2009)

See previous IPBiz post


Post a Comment

<< Home