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.