Robert Sachs, partner in the Intellectual Property practice group at Fenwick & West, was recently quoted in the Script Intelligence article, "U.S. Capital Capsule: Myriad BRCA case: Where did this 'mess' come from?"
The case of the Association for Molecular Pathology v. U.S. Patent and Trademark Office and Myriad Genetics about whether or not Salt Lake City based Myriad's method patent, known as Claim 20, should be held up or struck down has been brought to the U.S. Court of Appeals for the Federal Circuit. The courts will determine if certain patent claims that cover Myriad's BRCA genes are valid or if they are products of nature and not human-made inventions, and therefore unpatentable.
"What the courts and the parties in Myriad and other patent cases in recent years have been dancing around is the question of what's the definition of law of nature and is it the right definition," said Robert Sachs, a partner in the Intellectual Property practice group at Fenwick & West. "There's no analysis by either side as to what is a law of nature, what does it mean, are there even laws of nature."
"Everybody is just waving hands," Mr. Sachs said, adding that no federal court has attempted in decades to tackle these questions, and in many cases, have even confused the concepts of laws of nature, natural phenomena and abstract ideas.
With such abstract ideas in the courtroom, lawyers often use analogies because "it's easier to talk about things we can physically grasp in our hands." Some of the analogies used in cases such as this one can be problematic because they could "tilt the conclusion one direction or another," Mr. Sachs said.
"I really don't like that they argue about analogies and then try to draw conclusions from there," Mr. Sachs said. "They should be talking about the thing itself. What they should be looking at is the actual subject matter."