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By Ronald Fink
Biotechnology companies shaken by a US district court ruling earlier this week may not get as much help from an upcoming Supreme Court decision as they expect, according to a patent attorney.
In a suit filed by the American Civil Liberties Union on behalf of the Association for Molecular Pathology, Judge Robert W. Sweet of the US District Court for the Southern District of New York ruled Monday that seven patents held by Myriad Genetics related to genes linked to breast and ovarian cancer were invalid. Sweet said the patents involve DNA as it is found in nature, and that even the method Myriad used to try to transform it wasn't patentable.
The decision invalidating the patents could have wide-ranging implications for gene patent law and the biotechnology industry if it is upheld on appeal, attorneys say.
"It's not a game-changer yet, and there's a long way to go, but if it's affirmed as it currently stands, it certainly would be a game-changer," Patrick R.H. Waller, a partner in Wolf Greenfield & Sacks, told the website, Law360, on Wednesday.
Yet many attorneys are looking to the Supreme Court to render at least part of the decision moot through a ruling in an upcoming case involving a method for hedging commodity risk. The judge in the Myriad case relied heavily on a federal appellate court decision in the case now before the Supreme Court, known as Bilski v. Kappos, in finding that Myriad's method of transforming DNA wasn't patentable. That's because both method patents involved abstract mental processes, Sweet said.
But Alan Morrison, a principal in the New York law firm of Cohen Pantini Lieberman & Pavane, told CFOZone on Friday that the outcome of the Bilski case, which involves computer technology, may not be very relevant to DNA patents.
"Moot is too broad a word" to describe the potential result of Bilski, Morrison said. "Bilski will matter," the attorney conceded. But he said the case is "way outside of DNA" and that it will merely "lend some clarity" regarding claims in the Myriad case.
He added that "it's unclear what the effect would be in DNA," because the two cases involve "unrelated technologies."
To be sure, Morrison said he expected the Myriad case to be reversed by a federal appellate court because of previous rulings by such courts in favor of patents in DNA cases and because "there are lots of guidelines in the US Patent Office related to DNA."
Still, he added, "some murkiness" remained in DNA patent law, and the Supreme Court has become less friendly toward patents in general. Morrison cited the court's 2007 decision in the case of KSR International v. Teleflex, in which it invalidated a patent held by Teleflex because of the "obviousness" of the discovery it covered.
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