This article is one entry into the cottage industry of patent law analysis that is generated by the Court’s unanimous decision in Association for American Pathologists v. Myriad Genetics. The author analyzes the decision and puts it in context, both present and the near future. Although some find the decision devastating for the pharmaceutical and biotechnological industries, the ruling is not as fatal as some claim and sets the right course for the future of synthetic genetics
Nature, Nurture, and DNA Sequences
by Shubha Ghosh*
Vilas Research Fellow & Professor of Law and Elvehjem-Bascom Pofessor of Law
University of Wisconsin Law School
On June 13, 2013, the United States Supreme Court addressed the question of the patentability of DNA sequences. The Court’s answer seems straightforward. Isolating a naturally occurring DNA sequence does not give rise to patentability while creating a synthetic DNA sequence might be patentable. While this response seems clear cut on the surface, the answer raised even more questions. This article is one entry into the cottage industry of patent law analysis that is generated by the Court’s unanimous decision in Association for American Pathologists v. Myriad Genetics. Here, I analyze the decision and put it in context, both present and the near future. Although some find the decision devastating for the pharmaceutical and biotechnological industries, the ruling is not as fatal as some claim and sets the right course for the future of synthetic genetics.
In 1997 and 1998, Myriad Genetics was granted three patents related to identifying genetic sequences associated with susceptibility to breast and ovarian cancer. These patents covered the isolated gene sequence as well as complementary DNA sequences (cDNA), both useful for identifying the presence of the various strains of the cancer gene in patients and diagnosing the susceptibility to breast and ovarian cancers. Myriad marketed a diagnostic test for detecting the presence of the gene sequences. The company also sued private and university hospitals and health care providers for patent infringement.
Myriad’s practices became the subject of media scrutiny. Medical practitioners, patient rights advocates, and health care access proponents raised critical issues of high medical costs and patient’s right to know in questioning Myriad’s business and litigation strategies. In 2009, the American Civil Liberties Union (ACLU) filed a suit against Myriad, challenging its patents on First Amendment and other grounds. However, the ACLU’s legal standing to challenge the patents was questioned since the ACLU would never practice the patents at issue and therefore could not be sued for patent infringement. The Association for American Pathologists became the substituted plaintiff and the suit moved forward.
Spring 2010 marked the district court’s decision in the Myriad litigation and a turning point for biotechnology patenting. Judge Sweet of the Southern District of New York ruled that all of Myriad’s patents on DNA sequences were not patentable. The ruling rested on established, if somewhat vague, precedent that natural phenomena are not patentable. Judge Sweet reasoned that all DNA sequences whether isolated or synthetic were products of nature, indistinguishable from naturally occurring DNA sequences. Therefore, Myriad’s patents should never have been granted.
Needless to say, the responses from patent practitioners, industry players and academics were fervent. Even those who may have skepticism about biotechnology patenting were floored by the breadth of Judge Sweet’s decision. Those in the industry were for the most part stunned as the foundation for biotechnology developments were swept out from under the many companies that relied on patenting for funding and development.
Judge Sweet may have tapped into anti-patent sentiment. In June, 2010, the Supreme Court published its long awaited decision in Bilski v. Kappos, dealing with business method patents. While there was unanimity as to holding invalid the particular business method at issue (a method for hedging risk in commodities markets), four of the justices would have gone further and ruled that all business methods unpatentable. In 2012, the Supreme Court reviewed a patent on a medical diagnostic procedure to treat Crohn’s Disease held by the company Prometheus, who was alleging patent infringement by the Mayo Clinic. The Court ruled that the patent was invalid because it entailed using a correlation that would be an unpatentable law of nature. Judge Sweet’s 2010 ruling foreshadowed these developments. Upon appeal to the Federal Circuit, which hears appeals of patent cases, Judge Sweet’s decision was upheld although on slightly different reasoning in 2011. Upon further appeal by Myriad to the Supreme Court, the case was sent back to the Federal Circuit in 2012 for reconsideration in light of the Court’s ruling in Mayo v. Prometheus.
This back and forth of a case is not atypical in controversial areas of law. In 2012, the Federal Circuit once again upheld the unpatentability of the DNA sequences identified by Myriad. In its second review of the Myriad patents, the judges agreed that cDNA, or synthetic DNA sequences, would be patent eligible since they were not natural phenomena. What was key to this ruling was the finding that research scientists at Myriad had to engage in inventive activity in constructing the synthetic DNA sequence. Two of the three Federal Circuit judges ruling on the case also found that there was inventive activity in isolating the DNA sequence from its naturally occurring state. One of the three, however, reasoned there was no difference between the isolated DNA sequence and the naturally occurring sequence. Therefore, one dissenting judge concluded that isolated DNA sequences were not patentable. The Supreme Court decided to review this opinion and issued its own, final opinion in June, 2013.
Myriad Unanswered Questions
Two words describe the 2013 Supreme Court opinion: anticlimactic and frustrating. The anticlimax was in the Court’s conclusion that isolated DNA was not patentable while synthetic DNA could be. This conclusion followed as a matter of course from the Court’s precedent. What is frustrating is the reasoning supporting this conclusion.
In 1948, the Supreme Court ruled in a case called Funk Brother v. Kalo Inoculant Co. that a patent covering a combination of bacteria that facilitated nitrogen fixation in plants was a product of nature and therefore unpatentable. The purported inventor in that case had simply combined naturally occurring substances and had not invented anything. This ruling was important in the Court’s 1980 decision, Diamond v. Chakrabrty, in which the Court addressed the question of whether a genetically modified bacterium was an unpatentable product of nature or a patentable invention. The Court held that the inventor had modified the organism to create a new life form that did not exist in nature. Therefore, the new organism could be patented. The Diamond decision is famous for the oft repeated line that “anything under the Sun made by man” is potentially patentable.
The Myriad decision is a logical extension of these precedents. The Court had to determine whether the DNA sequences at issue were natural phenomena or man-made. Its conclusion was that isolated DNA is a natural phenomenon and synthetic DNA is man-made. What is puzzling is how the nine justices came to this conclusion. The Court seems to rely on expert scientific testimony that was part of the record. The opinion is steeped in a summary of the underlying science. Interestingly, Justice Scalia refused to sign onto the scientific exegesis although he agreed with the result. What lesson then for future cases about DNA sequences, whether human, animal, or plant?
Two possibilities emerge from the opinion. One is a comparison between the claimed DNA sequence and its natural counterpart. If they are identical, then the claimed sequence is a natural phenomenon and unpatentable. The Court seemingly engages in this mind numbingly complex comparison. This approach is similar to how court’s attempt to determine whether one software program has been copied from another in a copyright infringement case. As with copyright, the Court seems to be using a substantial similarity approach to comparing DNA sequences with their naturally occurring counterpart. Although there is a language in the opinion implying that such comparison is the appropriate methodology, this approach leaves open the question of how much similarity is enough.
The second possible approach to determining when a DNA sequence is patentable is to focus on the method for uncovering the sequence. The Court emphasizes that isolating DNA sequences snipping the relevant sequence from its natural state, like extracting a mineral from the earth. Constructive synthetic DNA involves scientific activity. With respect to the isolated DNA, the Court rejects the approach of the Federal Circuit that a researcher has to determine where to snip the natural sequence in order to derive the isolated one. That decision was enough to make the isolated sequence man-made for the Federal Circuit. But the Supreme Court does not view that decision as inventive enough. Extraction is not invention while synthesizing is. That distinction seems to be the clearest answer the Supreme Court provides for distinguishing naturally occurring sequences from man-made ones.
In short, the Supreme Court applied a predictable and recognized rule in reaching its decision in the Myriad case. But it is far from clear how this rule is to be applied in practice. On the day the Supreme Court opinion was announced, within hours, the United States Patent and Trademark Office (USPTO) issued a short memorandum to patent examiners summarizing the decision. The memo tracks the Supreme Court’s reasoning by stating that patents would not be issued for merely isolating DNA sequences but patents were available for synthetic sequences. The Office promises to issue further guidelines in the future.
One can hope that the USPTO provides some clarification on how to proceed. Needless to say there are some in the field who view the Myriad decision as devastating to biotechnology. Some of this speculation is overwrought. Since the Supreme Court concluded that patents on synthetic DNA, the future is not as gloomy as some foresee. While it is true that merely identifying naturally DNA sequences cannot be the basis for a patent, researchers and inventors will have to put more effort in creating synthetic forms and in developing inventions that tap the DNA sequences that have been mined. Arguably, such efforts can only enrich the industry and make the field more competitive and innovative. More devastating would have been the Myriad decision issued twenty-five years ago when identification of genomes, human, animal, and plant, was in its infancy. At that earlier limitations on patenting as we see in Myriad may have altered the field. But since the future is in synthetic DNA and in applications of isolated sequences, two areas of invention left untouched by the opinion, the Supreme Court may have just shut the barn door when the naturally occurring horse has been let loose. Instead of bemoaning lost patents, attention should turn towards the future. In that way, the Myriad decision may actually be ushering in the next stage of the genomic revolution.
 Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013).
 Ass’n for Molecular Pathology v. U.S. Patent and Trademark Office, 653 F.3d 1329 (Fed. Cir. 2011).
 Ass’n for Molecular Pathology v. U.S. Patent and Trademark Office, 702 F.Supp.2d 181 (S.D.N.Y. 2010).
 Bilski v. Kappos, 130 S.Ct. 3218 (2010).
 Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).
 Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948).
 Diamond v. Chakrabarty, 447 U.S. 303 (1980).
 USPTO Memorandum on the Supreme Court’s decision in Myriad, http://www.patentlyo.com/files/myriad_20130613.pdf
*Professor Shubha Ghosh brings a national and international reputation and over sixteen years of academic experience to University of Wisconsin, where he is Vilas Research Fellow & Professor of Law and Elvehjem-Bascom Pofessor of Law. He has authored numerous scholarly articles and book chapters as well as several books in the fields of intellectual property, competition law and policy, international law, and legal theory. His scholarship is among the most cited of the law school faculty. He is a member of the American Law Institute (ALI), American Antitrust Institute (AAI), American Intellectual Property Law Association (AIPLA), International Association for Advancement in Teaching and Research in Intellectual Property (ATRIP), past chair and co-founder of the AALS Section on Law & South Asian Studies, and member of the Executive Committee of the AALS Section on Internet and Computer Law. https://email@example.com