An extremely important case is presently pending in the U.S. District Court for the Southern District of New York. It raises the question whether isolated human genes comprise patentable subject matter under the patent law. (Association for Molecular Pathology et al. v. U.S. Patent and Trademark Office et al.)
Surprisingly little has been written about this case. Much of what has been written focuses on the plaintiffs’ claims that the grant of patents on human genes is unconstitutional and, in particular, that such patents violate the constitutional right of free speech. Because of this freedom of speech argument, commentators – including the present author – have tended to dismiss this case as some sort of silly ultra-liberal rant.
Recently, both parties filed motions for summary judgment. The plaintiffs’ supporting legal brief and the defendants’ combined legal brief in support of its motion and in opposition to the plaintiffs’ motion are now publicly available. They make very interesting reading. If nothing else, they establish that the plaintiffs have advanced some serious arguments within the context of historical legal precedent.
Addressing, for the moment, the patent law issues, it would appear that much of the controversy turns on claim construction. Both parties have included proposed claim constructions in their briefs and they diverge so widely that it is sometimes difficult to remember that they are both construing the same claim terms. In essence, it appears that the plaintiffs are urging a very broad claim construction so as to support their position that the subject patents are invalid as directed to non-statutory subject matter. Defendants, quite naturally, urge a more narrow construction to the point that they are seeking to incorporate (“read into” in patent lingo) into the claims limitations from the patent specification.
Turning to the constitutional arguments, and leaving aside the “free speech” claim which is indeed silly, the plaintiffs argue that the subject patents frustrate the stated constitutional purpose of “promoting science.” They argue that, in fact, these patents obstruct or reduce progress in this field; however, the only support they proffer is anecdotal at best. The defendants, in response, have presented data purporting to support their counterarguments and also intended to demonstrate their charitable and generous nature.
The bottom line here, in this author’s opinion, is that the plaintiffs have presented some serious patent law questions.