Jonathan E. Singer

Fish & Richardson PC

San Diego

Intellectual property litigation

When Singer and his team argued at the U.S. Supreme Court in Mayo v. Prometheus, he knew he would be confronting a fundamental question in intellectual property, and the limits of section 101 exceptions which say "Laws of nature, natural phenomena, and abstract ideas" are not patentable. Mayo v. Prometheus 566 U.S. 66 (2012).

The high court unanimously sided with Singer and his Client Mayo Collaborative Services LLC, finding that a method of administering a drug to a patient by first measuring the dosage, was directed to a law of nature and was therefore unpatentable.

"The Supreme Court has said for the last 170 years, 'there are certain things, no matter how brilliant you were in discovering them, people ought not be able to patent," Singer said.

When he again faced a similar question in 2019, this time in Athena v. Mayo, which asked if a method of diagnosing a rare autoimmune disorder by looking at human genes, he thought it would be a fairly routine matter. Athena Diagnostics Inc. v. Mayo Collaborative Services., 15-cv40075 (Fed. Cir.,)

"But it turned out to be anything but routine," he said.

Before the high court ultimately denied cert in January, 11 amicus briefs from around the country were filed, opposing Singer's position. Before that, the Court of Appeals for the Federal Circuit in an 86-page en banc denial order, rejected rehearing the matter in which Athena Diagnostics accused Mayo of infringing its patent for diagnosis.

However, the en banc order included eight separate opinions, four agreeing with the denial and four dissenting. Singer and his team originally persuaded the district court to dismiss the case in August 2017, with the judge ruling the claimed method of testing not eligible for patenting.

Singer said while he recognizes there are two schools of thought, one which argues the high court's position on patentability stifles innovation and investment in diagnostics and biotechnology and the other which says it provides better public access to knowledge concerning natural phenomena.

"Congress can certainly change the law, that's congresses prerogative, but until they do so, the Supreme Court will always--in my view-- air on the side to the public's right to use something."

-- Blaise Scemama