|
On April 15, the U.S. Supreme Court heard oral arguments in Molecular Pathology v. Myriad Genetics. For background information, see previous IP Value Wire coverage.
The American Bar Association provides an excellent repository of relevant information. Respondent Myriad Genetics obtained patents on two human genes, BRCA1 and BRCA2, mutations of which correlate to increased risk of breast cancer. The patents claim all naturally occurring versions of those genes, including mutations, on the theory that Myriad invented something patent-eligible by isolating the genes from the body.
Petitioners are primarily medical professionals who regularly use routine, conventional genetic testing methods to examine genes but are prohibited from independently examining the human genes that Myriad claims to own (and for which they charge $3.40 per test). This case presents the following questions:
- Are human genes patentable?
- Did the Court of Appeals err in upholding a method claim by Myriad that is irreconcilable with the Supreme Court’s ruling in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)?
- Did the Court of Appeals err in adopting a new and inflexible rule, contrary to normal standing rules and the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad’s “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally threatened with an infringement action?
Brief for petitioners.
Brief for respondents.
See here for links to all amicus briefs.
And here is the transcript of the oral argument.
The direction of biotechnology research hinges on the U.S. Supreme Court’s finding, scheduled for June. Though most of the amicus briefs support the petitioners, most of the rest of the world allows gene patenting. For example, the Federal Court of Australia ruled in February that isolated genes are patentable subject matter and upheld the validity of an Australian patent from Myriad Genetics Inc. covering the BRCA1 gene. Justice John Nicholas reasoned that isolated nucleic acids that have the same chemical composition and structure as nucleic acids naturally found in cells represent “an artificial state of affairs” and that isolated nucleic acid is the product of human intervention and thus patentable. Justice Nicholas concluded it is consistent with the intent of Australian patent law to allow people to be financially rewarded for their “skill and effort” to isolate DNA.
Ever since Uniloc’s rejection of the 15%-of-gross-profit rule of thumb for determining damages, experts have been attempting to combine other theories with Georgia-Pacific factors. Another attempt to use the Nash Bargaining Solution (NBS) to determine a reasonable royalty rate in a damages case has failed. In fact, it may well be that Judge Alsop’s warning in Oracle v. Google that “the Nash Bargaining Solution would invite a miscarriage of justice by clothing a fifty-percent assumption in an impenetrable façade of mathematics” is so memorable that it will determine the future of NBS in damages cases.
The latest case (the order from the Daubert hearing was filed April 12) is Suffolk Tech v. AOL. Suffolk’s damages expert, Roy Weinstein, applied the Georgia-Pacific factors to the patent in suit and then conducted a hypothetical negotiation based on NBS, concluding there should be a 50-50 split of the incremental profits.
U.S. District Judge T.S. Ellis III quoted Judge Alsop when excluding the expert’s testimony and found that the theoretical negotiation in Weinstein’s report was not tied to the facts in the case. “Weinstein does not explain why these parties would have accepted a 50/50 split,” especially in light of the fact that Weinstein’s own explanation of the theory behind NBS states that the theory does not always produce such a result, based on the parties’ respective bargaining power and other factors identified in Georgia-Pacific.
The Collegiate Licensing Co. reports 2012 sales from licensed collegiate retail items came in at $4.62 billion. The Licensing Letter reports this revenue is spit 65%-35% between apparel and non-apparel items. As basketball fans worldwide watch March Madness, the NCAA tournament that determines the national championship for Division I schools in the U.S., cash registers ring for participating schools.
Forbes reports George Mason University saw an increase of 143% in licensing revenue in the same year it made the Final Four. Virginia Commonwealth University had its largest royalty-grossing quarter in school history right after its successful participation in the tournament.
This year, as reported on Grimes & Battersby’s IP blog, longshot Florida Gulf Coast University advanced to the final 16 teams, and its March 2012-to-March 2013 licensed merchandise sales rose tenfold, to $200,000.
Anyone who doubts the value of the intellectual property that comes with sports teams need look no further than Sports Licensing Report and Sports Marketing, two resources published by EPM Communications. It’s no surprise then that sports organizations face potential cybersquatting threats.
Two recent domain name disputes involved major sports organizations, as reported in Sports Litigation Alert and again here.
The PGA Tour and the National Football League (NFL) each fought recent cybersquatting disputes. In both cases, the complainant sports organization argued that its IP rights had been violated because: 1) the domain was confusingly similar to its trademarks; 2) the cybersquatter had no legitimate rights to the domain; and 3) the domain was registered and used in bad faith. As a result of the vigilance of the complainants, ownership of “world-golf-tour.net” and “superbowlconcierge.com” were ordered transferred to the respective sports organizations.
As quoted in Forbes, Susan Scafidi, professor at Fordham Law School’s Fashion Law Institute, “design patents exist and can protect ornamental aspects of clothing—if a company is willing to invest substantial time and money.”
Is this valid, considering the fleeting nature of fashion? The 14-year protection design patents offer may prove somewhat valuable for accessories with longer shelf lives, such as handbags and sunglasses, and clothing like lingerie and undergarments. Witness the current row between Spanx and Yummie Tummie, “shapewear” with designs that last beyond one or two fashion seasons. Spanx is being sued for selling knock-offs of Yummie Tummie products and on March 5 asked a judge to determine the validity of the design patents in suit.
Discerning the economic useful life of a design patent in fashion is tricky and enters not only into any valuation question, but also into decisions on how to protect the design in the first place. When developing an IP strategy, fashion executives and their advisors may be well advised to look at the possibility of trademarking design elements that uniquely distinguish their products, much as Christian Louboutin has done with red soles.
Virtual reality is an esoteric realm not too many valuation analysts will enter, at least professionally. (As oxymoronic as it sounds, virtual reality is gaining substance. Now it has its own, increasingly popular, currency. See Bitcoin.)
IP Value Wire located a white paper that might prove to be instructional for analyzing the virtual reality space, laying out the overall landscape of related IP assets in terms of key patent holders (Sony, Phillips, Samsung, Microsoft, and others) and recorded transactions (over 140). The paper also derives a list of potential licensees or buyers of VR-related IP.
Sponsored by Columbia Law School and the USC Gould School of Law, and resident at mcir.usc.edu, the Music Copyright Infringement Resource offers complete summaries of every U.S. music copyright decision since 1845.
|
