Friday, January 25, 2013

Dulce Et Decorum Est Pro Industria Mori

Kevin Noonan, an exceptionally talented biotechnology patent attorney, has written a fascinating article on Patent Docs, the premier biotechnology patent blog, suggesting that Myriad Genetics might fall on its sword to save the rest of its industry from a damaging Supreme Court opinion.  Here is his conclusion:
[T]he question must be asked whether the prudent thing for Myriad to do is grant Dr. Ostrer a covenant not to sue on all the patents and claims involved in this litigation.  The result would be to render the issues before the Court moot;  regardless of the perceived importance of the Question Presented, even the Supreme Court is limited by Article III of the Constitution and cannot render an advisory opinion on this issue.  Such an action by Myriad would not only prevent this case from being decided, it would preclude the Court from including in its opinion dicta on the patent eligibility of isolated DNA from other species (which may have importance in fields like agriculture or biofuels) or other "products of nature" that may provide the basis for biologic and other types of drugs.  In view of the seemingly complete lack of any practical reason for having the Supreme Court decide this issue, and the risks to the progress provided for a generation by the biotechnology industry, nothing other than a desire to be vindicated remains to support seeing this case through to its conclusion.  Frankly, in view of what is at stake, such vindication is simply not enough.
As usual, Noonan has thought well ahead of the crowd.  Myriad is unlikely to take his advice, but it and its industry may regret the result.