The Supreme Court also issued four more patent-related decisions within the last five years that are likely to be of limited interest to the readers of Industrial Heating magazine. The first case involved gene patents. The second case involved self-replicating technology. The third case concerned the subject matter jurisdiction of patent malpractice claims. The fourth case, Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A S, 566 U.S. ___ (2012), involved a highly technical issue concerning drug patents that will not be discussed in detail in this blog posting.
The Supreme Court considered the patentability of a certain type of gene patent in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, 133 S.Ct. 2107 (2013). In this case, the patent owner obtained a number of patents relating to the precise location and sequence of two human genes, which when mutated can substantially increase the risks of breast and ovarian cancer. The Court held that the patents were invalid because the genes merely represented naturally occurring molecules.
A patent owner genetically altered soybean seeds to allow them to survive exposure to the herbicide glyphosate in Bowman v. Monsanto Co., 569 U.S. ___, 133 S. Ct. 1761, 185 L. Ed. 2d 931 (2013). The patent owner sold the seeds subject to a licensing agreement that permitted farmers to plant the purchased seed in one, and only one, growing season. The farmers were not permitted to replant the seed for a second growing season. However, many farmers would sell their seeds to a local grain elevator after the growing season.
One farmer purchased the seeds from the grain elevator and replanted. The farmer was sued by the patent owner for violating the license agreement. The farmer argued that he was permitted to replant the seeds in view of the patent-exhaustion doctrine that prevents patent owners from restricting people who purchase patent products from engaging in certain conduct.
The Supreme Court held that the patent-exhaustion doctrine did not prevent the patent owner from restricting farmers from replanting the seeds in a second growing seasoning. Basically, the self-replicating nature of the technology made it necessary for the Court to limit the patent-exhaustion doctrine to ensure that patent owners were properly compensated for the use of their inventions.
State vs. Federal Jurisdiction for Patent Malpractice Claims
Another issue that was recently addressed concerned the jurisdiction of state courts and federal courts for patent malpractice claims. The states regulate the conduct of attorneys who appear in both the federal courts and the state courts in the U.S. Most malpractice actions are governed by state law and are usually heard in state court.
However, federal courts have exclusive jurisdiction for substantive patent cases pursuant to a federal jurisdiction statute, 28 U.S.C. § 1338(a). As a result, the Supreme Court had to consider whether patent malpractice claims should be resolved under federal law or under state law in Gunn v. Minton, 568 U.S. 310 (2013). The Supreme Court held that malpractice claims ultimately arose out of state law, so state courts should have subject matter jurisdiction over such claims.