Throughout history – at least recent history – parties accused of patent infringement have shown remarkable ingenuity and creativity in devising and asserting new defenses to the claims made against them. However, we are here to acknowledge a “first” – the first attack on a patent on the grounds that its enforcement would be unconstitutional; specifically, that it would violate First Amendment rights.
For those readers who slept through high school civics, the first amendment to the U.S. constitution guarantees freedom of speech. The patents in question relate to human genes, mutations of which have been linked to breast and ovarian cancers. The patents are licensed to Myriad Genetics, which has sought to enforce its rights under the patents by threatening to sue the National Cancer Institute and various universities unless they cease their research on the genes and stop testing women for risk-carrying mutations. (Myriad Genetics is apparently run by true humanitarians.)
Recently, lawyers at the Public Patent Foundation and the American Civil Liberties Union sued Myriad, the University of Utah Research Foundation (which owns the patents) and the U.S. Patent and Trademark Office, alleging that the patents are invalid both because they are unconstitutional and because they cover “products of nature.”
Myriad and the PTO – we would hope the PTO’s cooperation with Myriad is reluctant – moved to dismiss the suit on the grounds that the plaintiffs lacked personal and subject matter jurisdiction and because they failed to state a claim for a constitutional violation. This week, a federal district court judge in Manhattan denied this motion, ruling that the plaintiff’s allegations were “plausible, specific and form a sufficient basis for Plaintiff’s legal arguments.” The court will next consider motions for summary judgment, which are due to be filed next month.