The Supreme Court is in the midst of deciding whether to grant the Ass'n of Molecular Pathology's petition for a writ of certiorari in the Myriad gene patent case. The petition, led by public interest patent attorney Dan Ravicher, poses a simple question to the court: "Are human genes patentable?" Petitioners also ask the Supreme Court to provide more latitude for public interest groups to challenge patents even in the absence of any personal or direct threat of an infringement action – arguing that the Federal Circuit is not following the Supreme Court's guidance set forth in MedImmune.
In addition to the party briefs, ten amici briefs were filed with the court from a variety of medical associations, hospitals, and professors – all in support of the petitioners. None of the major patent law associations filed briefs in the case.
The briefs were complete and distributed to the Justices on January 25 in preparation of a February 17 conference. In patent cases, the typical result of the conference is that the court either (1) grants certiorari; (2) denies certiorari; (3) invites comments from the Solicitor General; or (4) does nothing until the next conference. We learned today that the Supreme Court is following path number 4 – no action until next time. At some point before the close of term, the Supreme Court will revisit the case and announce that it is following one of the other paths. In an e-mail, Hal Wegner noted that the Supreme Court is scheduled to release new orders three times during next five weeks.
The delay may well be related to the fact that the Court is in the midst of drafting a merits decision in another § 101 patent-eligibility case of Mayo v. Prometheus. Although the Mayo case focuses on medical methods rather than genes per se, there is still a good chance that outcomes will be linked.
Other Denials: The court today did deny certiorari in several patent cases, including Janssen Biotech, Inc. v. Abbott Laboratories; Hynix Semiconductor v. Rambus; and Eastman Chemical Co. v. Wellman, Inc.
In Janssen Biotech, the patentee unsuccessfully challenged the de facto heightened written description standard that the court has placed on biotechnology focused patents. In Hynix, the accused infringer unsuccessfully asked the Supreme Court to follow principles of equity in preventing infringement claims over industry-standard products by a patentee who had concealed its pending patent applications from the standard setting organization and had amended its claims during prosecution to cover the agreed-upon standard. In Eastman Chemical, the Supreme Court refused to consider whether the Federal Circuit should add some teeth to the indefiniteness doctrine codified in 35 U.S.C. §112(2).