The Patent Doc blog provides its usually sterling effort in recapping the oral arguments presented to the Federal Circuit court in the appeal of Judge Sweet's AMP vs USPTO gene patent decision. And if you want some good coherent coverage, I suggest you read it in its entirety.
I, on the other hand, prefer to pick some random passages out of the lawyers arguments where they draw analogies "to isolating DNA sequences from chromosomes" or "products of nature" and attempt to appropriately apply it to their legal arguments for or against the "patent eligibility of isolated gene sequences".
Here we go with some of the more colorful passages to give you a flavor of how far afield we can travel in trying to draw analogies:
- distinguish isolating a mineral from a rock, requiring "extensive excavation" or "breaking the bonds" binding the mineral to the other materials in the rock, and ask how is that really different from isolating DNA
- the mineral is still the mineral when in the rock, and it is physically but not chemically joined as a different molecular substance, whereas "a gene is distinctly different in the isolated state from what it is in the body"
- "only God can make a tree" and yet a baseball bat produced from wood can be patent-eligible, and that in a way that bat is "embedded" in the tree like DNA that is isolated is embedded in a chromosome
- the isolated gene has "the exact same nucleotides" as in the native chromosome.....implied that the BRCA gene was just sitting there like diamonds in a mine next to iron and uranium
- metaphor of a kidney in its "natural state" in his body and that surgical removal of the kidney didn't make the kidney patentable, saying that "the fact that surgeons used a scapel instead of a chemical is exactly irrelevant"
- "there are many complex molecules that can be changed by lopping off some portion" thereof and "creating another molecule that was, in a sense, embedded in the first molecule"
- that "you can't use gold when it is in the mountain" to make jewelry and that a kidney is no less a kidney because you cannot use it for a transplant when it is in the body
- there is no difference between breaking covalent bonds versus "veins or arteries or rocks" ....the relevant difference is whether "the thing once I've taken it out is identical to the thing that was inside"
- "half of gold is still gold" and "DNA is DNA"
- genes were "bonded to other materials" ....and lithium "exists as salts with covalent bonds" but "nobody would think that the third element in the periodic table" could be patentable because it doesn't exist in nature
- finding that an isolated gene was patent-eligible would be equivalent to finding that an "isolated electron" was patentable
- discovery that pollen from a particular plant provided a cure for cancer, but that purified pollen would not be patent eligible
- purified lithium should be patent eligible because it has "new utilities" not found in nature
And as the Patent Doc blog notes, the analogies were tenuous to the subject matter at issue and in some instances completely inapt.
So, there you have it. From these type of not so pertinent analogies we're going to settle some case law with regard to patent eligibility of gene sequences -- and perhaps throw out 35 years of USPTO precedent and goodness knows how many patents. Hopelly the court will pay attention to stare decisis in its decision making.
Posted by Bruce Lehr April 7th 2011.