Myriad case, Federal Circuit decision - reason for hope

No one can be terribly surprised that the Federal Circuit ruled essentially to continue the practice of gene patents yesterday. But there are some surprising tidbits in the various, lengthy, and somewhat contrary decisions of the three panel judges. One disappointment for gene patent proponents was the ruling on standing, which held that indeed there was standing for the plaintiffs to bring a declaratory judgment action as they did. Some hoped that the Federal Circuit would drop-kick the case on standing and never have to reach the substantive issues. Those hopes were dashed when the court concluded that there was at least one plaintiff with standing to sue based on an ongoing harm.

More surprising is the holding regarding the method claims relating to comparing or analyzing sequences, which the court struck down unanimously as unpatentable under Bilski. This is a minor win, and increases the likelihood of continued appeals as no-doubt Myriad will want to have either the en banc circuit review this, or the Supreme Court (perhaps both will happen eventually).

Unsurprising is that the court ultimately upheld their reasoning that X sometimes does not equal X. Violating the logical law of identity has been the underlying reasoning behind such ridiculous decisions as Parke-Davis (cited by the court) which established the "isolated and purified" notion by which a number of patent attorneys now are forced to argue that sometimes two morphologically identical molecules are nonetheless not identical. In continuing to strain logic, the majority decision holds that the sequence claims cover patent-eligible compositions of matter. But the silver lining is that there is division on the court, and the reasoning of the Majority, and concurrence of judge Moore, illustrate just how strained the logic has become. Moore argues that there is some significant chemical distinction between an isolated gene and a gene found in nature because at the ends of the isolated gene are nothing, whereas at the ends of the gene found in nature are more nucleotides. This does not support any claim of morphological difference between the claimed gene or gene parts and the sequence identified as occurring in nature. As I argue in my book, drawing a border does not create, automatically, a new, unique thing, especially where, as here, the information encoded in the string (which directs the functionality of a gene) is nature's own definition of a border.

Finally, Judge Bryson sees clearly the illogic of extending patent eligibility to isolated DNA, and writes a dissent to that part of the majority holding, using arguments I and others have made often.

What this means is surely that this fight is far from over, that it will be appealed, likely, to the en banc Federal Circuit and ultimately to the Supreme Court. Unfortunately, by the time a Supreme Court decision is final, Myriad will have run out the clock, having reaped its billions in profit from their unethical practice before the patent expires.

Moving on from this blog

I have really enjoyed, benefited from, and hopefully contributed to the discussion of gene patents with both my book and this blog, but I am moving ahead. My new book comes out in the next month or so, and I will be focusing my academic work more broadly on questions pertaining to meta-ethics, normative ethics, and justice. Thank you all for participating in this discussion, and for your interest in this important topic. Here's a draft cover of my new book (click on it to enlarge):

I will be updating about my future research soon. If you're interested, you can find me on Twitter.

New Issue of GeneWatch Magazine

My Article: Naturally Occurring Genes and the Commons by Necessity appears in the latest issue of GeneWatch Magazine, a publication of the Council for Responsible Genetics. There is an impressive line-up of authors for this issue, including Chris Holman, Kevin Noonan, Robert Cook-Deegan, and interviews with Daniel Ravicher and Sandra Park. Most of these arguments are the usual, utilitarian sort on both sides of the issue. I tried to be clear in my article about the deontological, ethical necessity of not patenting unmodified parts of nature, expanding and clarifying, I hope, the arguments I began to make in my book. I have yet to see a decent reply to these deontological arguments beyond the usual utilitarian pleas. The whole issue is worth reading to see the various perspectives and arguments. I am proud to be among the authors, and thankful to the editors.

another amicus brief in which Who Owns You gets cited.

This Amicus brief cites to my book, and discusses briefly my notion of the commons by necessity. Always nice to see someone is paying attention. Many thanks to the authors and amici. There are 12 briefs by amici in support of plaintiff-appellees, and 16 for the appellants. Now we wait for oral argument,which ought to be fun. Wish I could watch.

A nice brief from amici AMA and others, by Lori Andrews and Joshua Sarnoff

Read the brief here in support of plaintiff-appellees. A number of other briefs are out there, including the response brief of ACLU. There are also a number of briefs on the other side of the debate, a good list of which is here.

game over

Just a brief respite from my hiatus to call attention to the recent filing by the US Department of Justice in support of plaintiffs in the AMP v. Myriad suit. It vindicates the arguments I made all along that isolated genes are not inventions, but are parts of nature, and thus not patent-eligible. It will be interesting to see how this plays out in the lawsuit, and how the PTO will react. Read the brief: it's succinct, straightforward, and spot-on. I can almost hear the wailing and gnashing of teeth from the bio-tech industry clear across the Atlantic ocean. Ah, sweet justice.

Hiatus

It's been a while since I updated, and I doubt I will have much time to continue to update this blog in the next few months. We are expecting a child next month, our first, and I just put the wraps on my new book due out next summer (you can pre-order it now, if you want).

Obviously, the fight against gene patents will continue, and as the AMP vs. Myriad appeal works its way up through the courts, I am sure I will chime in with my thoughts. As well, we expect the film to be finished by early 2011 at the latest. I'll keep you all informed.

Thanks for continuing to follow this important, ongoing struggle.

best,
David