US Court Rules Again That Natural Phenomena Cannot Be Patented, Casting Further Doubt On Gene Patents

from the keep-'em-coming dept

Tue, Nov 5th 2013 1:49pm — Glyn Moody

Back in June, Mike wrote about the important Myriad Genetics judgment from the Supreme Court, which said that naturally-occuring genetic material could not be patented. However, because of some hedging from the judges, there were concerns about how much this would block gene patents in practice. Last week we had an indication that the impact is indeed likely to be significant, as VentureBeat reports:

a District Court judge in California upheld the landmark [SCOTUS] ruling, and struck down a patent held by a San Diego-based diagnostics company called Sequenom. Sequenom offers a non-invasive genetic test for Down's Syndrome, which pregnant women can take as early as 10 weeks.

Sequenom plans to appeal the decision to the Federal Circuit Court of Appeals. It was highly unexpected, and has caused shockwaves of disbelief in the scientific community. The judge, Susan Illston of the United States District Court in Northern California, ruled against Sequenom after a summary judgement, citing the Supreme Court case "Association for Molecular Pathology v. Myriad Genetics, Inc., 12-398."

In both cases, the judge ruled that a "natural phenomenon" could not be patented.

As Science magazine explained in its report on the case: If this decision stands, "I don’t see how you can maintain a genetic diagnostic claim anymore," says Christopher Holman, a molecular biologist and professor of law at the University of Missouri, Kansas City.
However, that does not mean that biotech is now an area that will be abandoned by investors. As the VentureBeat story notes: Bryan Roberts, a health-focused investment partner at Venrock, predicts that "real innovation will be patentable and rewarded" while patents on natural phenomena will not. Roberts is a leading investor in Ariosa Diagnostics, the San Jose, Calif. based company that filed suit against Sequenom in 2011.
That connection means that Roberts may be biased in his view of this particular case, but his broader analysis of the ruling's impact remains true: The ruling "raises the bar to rely on intellectual property as a business defense," said Roberts. "It will drive prices down [and support] the product that is both high quality and efficiently priced."
What makes this latest judgement (embedded below) particularly welcome is that it joins the Myriad Genetics decision, and an earlier SCOTUS ruling that struck down a patent on basic medical diagnostics, to form part of a growing body of US case law that brings some much-needed sanity to the world of gene patents.

Follow me @glynmoody on Twitter or identi.ca, and +glynmoody on Google+

Illston Order Sequenom 0 (PDF)Illston Order Sequenom 0 (Text)

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: biotech, dna, gene patents, patents
Companies: ariosa diagnostics, myriad genetics, sequenom

13 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

DannyB (profile), 5 Nov 2013 @ 1:53pm

A simple fix for this whole mess
If natural phenomena cannot be patented, then a simple workaround would be to hire congress to enable corporations to own human beings.
[ link to this | view in chronology ]
- PopeyeLePoteaux, 5 Nov 2013 @ 1:56pm
  
  Re: A simple fix for this whole mess
  Or what we know as corporate bribing or lobbying.
  [ link to this | view in chronology ]
- Anonymous Coward, 5 Nov 2013 @ 4:36pm
  
  Re: A simple fix for this whole mess
  They dont?
  [ link to this | view in chronology ]
  - The Mighty Buzzard (profile), 5 Nov 2013 @ 4:41pm
    
    Re: Re: A simple fix for this whole mess
    Only the insurance industry can for the most part. The rest you can give the finger and refuse to do business with if they cheese you off.
    [ link to this | view in chronology ]
    - Anonymous Coward, 5 Nov 2013 @ 5:26pm
      
      Re: Re: Re: A simple fix for this whole mess
      And the private prison industry
      [ link to this | view in chronology ]
Mad Scientist, 5 Nov 2013 @ 10:25pm

US Court Rules Again That Natural Phenomena Cannot Be Patented

BAH! There goes my plan to patent tornadoes. I would've made a MINT!
[ link to this | view in chronology ]
- Anonymous Howard (profile), 6 Nov 2013 @ 7:44am
  
  Re:
  Sue the govt for "lost expected profits"
  [ link to this | view in chronology ]
Ninja (profile), 6 Nov 2013 @ 2:11am

Darn! I was going to patent Human Stupidity but it seems I can't. A pity, I'd make millions just from a few commenters here alone *cough*ootb*cough* =/
[ link to this | view in chronology ]
Andrew D. Todd, 6 Nov 2013 @ 3:44am

Only To Be Expected
The parent article made one mistake. The district court did not "uphold" the Supreme Court ruling-- it _applied_ it. District courts do not have the competence to uphold or not uphold Supreme Court rulings, and neither do circuit courts of appeal. The Supreme Court has ruled in enough different cases to make its meaning crystal-clear to anyone but a fanatic or a gross corruptionist. Judge Randal Rader of the Court of Appeals for the Federal Circuit is a fanatic. The East Texas court is a nest of gross corruptionists. As for Judge Lucy Koh, your opinion is as good as mine. The vast majority of judges do not like getting reversed, and therefore apply Supreme Court decisions, rather than disputing them. It is only venture capitalists, patent lawyers, etc. who have difficulty understanding that the Supreme Court meant just what it said in KSR vs. Teleflex, and would only amplify that meaning in subsequent decisions.

All the current case reveals is that Judge Susan Illston is not a fanatic or a gross corruptionist, at least in respect of patents.
[ link to this | view in chronology ]
Anonymous Coward, 6 Nov 2013 @ 7:34am

a District Court judge in California upheld the landmark [SCOTUS] ruling

There is something very wrong with that sentence.
[ link to this | view in chronology ]
Thomas (profile), 6 Nov 2013 @ 10:00am

Shouldn't a company still be able to patent their method for testing for a gene and not own the gene itself?

Fuck this, I'm gonna patent silicon and own Intel!
[ link to this | view in chronology ]
- Sheogorath (profile), 7 Nov 2013 @ 7:09pm
  
  Re:
  Whereas I'ma patent silicone and own women's breasts!
  [ link to this | view in chronology ]
- terry_allen (profile), 15 Sep 2014 @ 9:45am
  
  Re:
  Absolutely, but Myriad wanted to go farther than that, by claiming that their patent gave them the right to exclude others from even doing research on 'their' chunk of the human genome.
  [ link to this | view in chronology ]