Tuesday, August 02, 2011

Andrew Cohen on Myriad decision

Andrew Cohen discussed the Myriad case in Atlantic. He carefully pointed out the degrees of Judge Lourie (Ph.D. in chemistry) and of Judge Moore (electrical engineering) but mentioned dissenting Judge Bryson's discussion

It was left to the third judge on the Federal Circuit panel, Judge William C. Bryson, to dissent. First, he was blunt: "In its simplest form," he wrote, the question in this case is whether an individual can obtain patent right to a human gene. From a common sense point of view, most observers would answer, 'Of course not. Patents are for inventions. A human gene is not an invention.'"

Next, Judge Bryson went to the core of the matter. He compared human genes to minerals. He compared them with marble and a baseball bat. And then, memorably, he compared genes to a more familar symbol of nature.

without mentioning Judge Bryson's technical background. Judge Bryson's CAFC biography notes: Judge Bryson received an A.B. from Harvard College in 1969 and a J.D. from the University of Texas School of Law in 1973.

Judge Bryson's comparison to minerals begins in the text:

Myriad’s claims to the isolated BRCA genes seem to me to fall clearly on the “unpatentable” side of the line the Court drew in Chakrabarty. Myriad is claiming the genes themselves, which appear in nature on the chromosomes of living human beings. The only material change made to those genes from their natural state is the change that is necessarily incidental to the extraction of the genes from the environment in which they are found in nature. While the process of extraction is no doubt difficult, and may itself be patentable, the isolated genes are not materially different from the native genes. In this respect, the genes are analogous to the “new mineral discovered in the earth,” or the “new plant found in the wild” that the Supreme Court referred to in Chakrabarty. It may be very difficult to extract the newly found mineral or to find, extract, and propagate the newly discovered plant. But that does not make those naturally occurring items the products of invention.

The same is true for human genes. Like some minerals, they are hard to extract from their natural setting. Also like minerals, they can be used for purposes that would be infeasible if they remained in their natural setting. And the process of extracting minerals, or taking cuttings from wild plants, like the process of isolating genetic material, can result in some physical or chemical changes to the natural substance. But such changes do not make extracted minerals or plant cuttings patentable, and they should not have that effect for isolated genes. In each case, merely isolating the products of nature by extracting them from their natural location and making those alterations attendant to their extraction does not give the extractor the right to patent the products themselves.

This discussion preceded Judge Bryson's reference to Linus Pauling:

A chemical bond is merely a force between two atoms or groups of atoms strong enough “to make it convenient for the chemist to consider [the aggregate] as an independent molecular species.” Linus Pauling, The Nature of the Chemical Bond 6 (3d ed. 1960).

One might observe that the concept of a "chemical bond" is not a convenience for the chemist, but rather a reflection of physical reality. A molecule of water has different properties from its constituent elements hydrogen and oxygen.

The next sentence in the Bryson text is an allusion to a dirty diamond: Weaker interatomic forces will be broken when, for example, a dirty diamond is cleaned with water or another solvent, but that does not make the clean diamond a human-made invention.

**As background, the first issued US patent related to a method for making potash. See
July 31, 1790: first US patent granted
. Potash itself was known at the time, just as diamonds
would have been known before the one being cleaned with water.

**The lithium argument had appeared in an amicus brief in the Myriad case. See
DoJ amicus brief in Myriad says no to patentability of genomic DNA

The brief itself is not cited in the text:

Isolated lithium does not occur naturally because it reacts with air and water and thus is found in nature only as part of a chemical compound, ionically bound to other elements. Robert E. Krebs, The History and Use of Our Earth’s Chemical Elements 48 (2d ed. 2006). Once isolated, lithium has many industrial applications, and in order to isolate lithium, it is necessary to break ionic bonds in the lithium compounds that are found in nature. But the majority acknowledges that elemental lithium (like other elements) would not be patentable subject matter because it “is the same element whether it is in the earth or isolated.”

**The Myriad decision by CAFC

See also: http://ipbiz.blogspot.com/2011/07/cafc-decides-myriad-sdny-mostly.html

**UPDATE on 4 Aug 2011

See also More On Myriad: The Chemical Divide--Judge Lourie


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