The following summary outlines the fourth, fifth, and sixth panels of the conference. Additional case backgrounds provided by Oyez.
David Clough, Dr. Harry Ostrer (petitioner), John Hendricks (counsel to amici curiae) and Kevin Noonan (counsel to amicus curiae) participated in a panel on the popular Myriad case, which investigated the patentability of human DNA sequences. The Supreme Court ruled unanimously for the petitioner, arguing that naturally occurring gene sequences (such as those Myriad had patented) are not patent eligible according to §101 of the Patent Act; however, the Court allowed that sequences refined or synthesized in a lab are not a “product of nature” and are thus patent eligible. Dr. Ostrer said he was motivated to bring the case against Myriad because “competition is a good thing; it promotes innovation.” The panel noted that patients viewed Myriad’s patents as a monopolization and commercialization of something that could otherwise lead to better health care and that the decision benefits the industry as well as patients by diversifying business and innovation.
In this case, the Court examined the question of patent exhaustion in second generations of genetically modified seeds. Scott Burow, Vernon Hugh Bowman (petitioner), Mark Walters (counsel to Bowman), and Paul Wolfson (counsel to Monsanto) took part in the panel and discussed the unanimous decision, which held, in Monsanto’s favor, that the doctrine of patent exhaustion does not allow a purchaser to make copies of a patented product (i.e. planting second generation seeds) without permission from the patent holder. Bowman and Walters recounted their arguments for why they did not think Bowman had infringed Monsanto’s patent, and Wolfson noted that the decision reinforces the value of patents in biotechnology, an important issue for the economy. The panelists also noted that the Court couldn’t easily draw a line as to what sort of replanting was acceptable what wasn’t, making an “all or nothing” decision necessary.
Professor Ed Lee moderated and Chris Buccafusco took part in this panel on a case regarding international copyright exhaustion and the importation of foreign-made works. In Kirtsaeng, the Court held for the petitioner that there is no geographic restriction on the “first sale” doctrine, which provides that a copyright owner maintains control of the first sale only—specifically, the doctrine was interpreted as covering copies of a copyrighted work that were acquired abroad but resold in the US. Bart Lazar joined the panel to debate whether the Court’s interpretation of the first sale doctrine was correct (as it diverged from previous interpretations, especially in the understanding of the phrase in the Copyright Act that reads “lawfully made under this title”) and to discuss its possible implications. The panel pointed out that the decision could lead to various market changes, either desirable or undesirable, but that it is not any more limiting in its copyright protection for copyright owners than previous decisions.
Look for Part 3 of the SCIPR 2013 review soon.