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Thursday, April 11, 2013

Thoughts on the Supreme Court, Door Knobs, and Genes

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A speaker at a recent gene patent conference I covered suggested that the Supreme Court has of late been retreating back to the ideas of an 1850 case about door knobs.  

In Myriad, the court on April 15 will hear oral arguments in a challenge to the patent eligibility of Myriad Genetic’s claims for the BRCA1 and BRCA2 genes associated with breast cancer. The U.S. Court Appeals for the Federal Circuit reversed a district court ruling that found the claims ineligible for patenting since they concerned products of nature.  

Laura A. Coruzzi of Jones Day, New York, who coauthored some of Myriad’s briefs in the case, sounded a warning in remarks she made March 11, 2013 at a conference on patents for genes and diagnostics at Cold Spring Harbor Laboratories. She suggested that the current Supreme Court appears to be looking back to the court’s 1850 ruling in Hotchkiss v. Greenwood that concerned the patentability of door knobs.  

In the 1850 case, Hotchkiss asserted a patent because he said he improved a door knob by substituting clay for wood. The court held that “there was an absence of that degree of skill and ingenuity which constitutes essential elements of every invention.”  

But while Hotchkiss differentiated between the work of an inventor and that of a skilled mechanic, subsequent courts struggled to make this clearer, using terms such as “flash of genius” and “invented step.” Coruzzi said, “There was also just a single statutory provision governing both patent eligibility and patentability, with the implicit requirement of ‘invention.’”  

In 1952, Congress revised the Patent Act, separated patent eligibility requirements from patentability, and replaced vague court-created language of invention with Section 103 and the patent requirement of nonobviousness, which compares what is to be patented to prior art.  

“But today’s Supreme Court appears to view the modern Patent Act as actually codifying Hotchkiss on doorknobs in its requirement for more ingenuity and skill than that of a mechanic,” Coruzzi said. “You see this in its ruling in Mayo v. Prometheus [holding that claims directed to methods of calibrating drug dosages were not patent eligible because they concerned laws of nature], which used the term ‘inventive concept,’ ignored the restructuring of 1952, and once again conflated patentability and patent eligibility.”  

Time will only tell whether the court’s seeming evocation of door knobs was passing fancy or a trend.  

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