For the moment, speaking solely to the “isolated DNA” claims and argument, let’s take a look at Judge Sweet’s analysis.
Let’s look at the case law he mainly relied upon:
American Wood-Paper Co. v. The Fibre Disintegrating Co., 90 U.S. (23 Wall.) 566 (1874)
Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293 (1884)
Ex Parte Latimer, 1889 Dec. Comm’r Pat. 123 (1889)
Gen. Elec. Co. v. De Forest Radio Co., 28 F.2d 641 (3rd Cir. 1928)
American Fruit Growers, Inc. v. Brodgex Co., 283 U.S. 1 (1931) (rejects Myriad’s argument that this case was decided on novelty grounds)
In Re Mardin, 47 F.2d 957 (C.C.P.A. 1931)
In Re Merz, 97 F.2d 599 (C.C.P.A. 1935)
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (rejects Myriad’s argument that this case was decided on an obviousness determination)
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
JEM Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001)
Two things jump out at me when looking at these cases. First, there is not a single Federal Circuit Court of Appeals case in the list. Granted, there are two C.C.P.A. cases from the 1930s, but given that the Federal Circuit is pretty much the holy grail when it comes to patent law, I find it hard to believe that there was nothing worth citing (dicta or otherwise) in any Federal Circuit case on this issue addressing gene patents. Has the Federal Circuit really never commented on this issue? I'll do some research on that. As I said in my post below, biotech patents aren't an area I generally deal with, so I don't know the answer to this question off the top of my head.
The second thing that jumps out at me is that the majority of these cases are extremely old. What’s amusing about that is that Judge Sweet specifically cites to and points to part of Judge Rich’s discussion of the 101 analysis from In Re Bergy, 596 F.2d 952 (C.C.P.A. 1979), in particular Judge Rich's statement that “statements in the older [pre 1952] cases must be handled with care lest the terms used in their reasoning clash with the reformed technology of the present statute; lack of meticulous care may lead to distorted legal conclusions.” Yet, Judge Sweet’s analysis relies upon eight cases decided prior to the Patent Act of 1952. Do these cases even apply anymore, given the changes in patent law over the past 100 years? Is it clear that these cases all dealt with 101 and not novelty or obviousness? Another issue I'll take a look at.
Let’s move on to the cases he distinguished, and why:
In Re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) (distinguished because it dealt with obviousness of the biological product claims)
In Re O’Farrell, 853 F.2d 894 (Fed. Cir. 1988) (distinguished because it dealt with obviousness of the biological product claims)
Merck & Co., Inc. v. Olin Mathieson Chem. Corp., 253 F.2d 156 (4th Cir.) (the purified product was “more than a mere advance in the degree of purity of a known product”)
In re Bergstrom, 427 F.2d 1394 (C.C.P.A. 1970) (distinguished because it presented issues of novelty)
In re Kratz, 592 F.2d 1169 (C.C.P.A. 1979) (distinguished because it presented issues of novelty)
Parke –Davis & Co. v. H.K. Mulford Co., 189 F.2d 95 (S.D.N.Y. 1911) (distinguished because it dealt with novelty)
All of these cases except for one were distinguished on the basis that they did not address 101 issues, but instead were dealing with 102 and 103 issues. One thing I do remember from law school and dealing with 101 (since it really rarely comes up as an issue in litigation) is that sometimes it is difficult to tell on what basis a patent is invalidated in the older cases, as Judge Rich pointed out. Interesting, though, that Judge Sweet had no problem making this determination in the case law that didn't support his position. I’ll withhold any opinion on this issue until I have a chance to look at these cases.
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