cyckV4

Abstract Ideas, Business Methods and Computer Programs 667
Questions:
1.) As the Court explains, cDNA, or complementary DNA is—effectively—a purified
(“exon only”) form of DNA with all of the portions (“introns”) that do not code for
proteins spliced out. If you have a bad case of biotechnologophobia, or the inherent fear
of biotechnology jargon, you could use a couple of analogies to understand this. When
you get a new program for your computer, it will have all kinds of junk in it—help files,
font libraries, flying paperclip animations. But there will also be a file that is the heart of
the program’s functions—the thing that makes the computer work; the “.exe file,” in older
Windows computers, for example. cDNA is the biological equivalent of that. For those
who fear both the digital and the biotech world (are you perhaps in the wrong class?) think
of DNA as your house key. It has a plastic tab on it to spare your fingers, it is emblazoned
with a trademark of the lock company, and it sits on a keyring festooned with mini
flashlights and supermarket loyalty cards—all things unconnected to opening the door.
cDNA is the notched part of the key that opens the door—nothing else. What line does
the court draw here in terms of patenting human genes and patenting cDNA sequences?
Why? Does this distinction satisfy you? Why do we not ban all gene patents of any kind
on the ground that the underlying raw material is “natural”?
2.) The court says that the purified sequences in cDNA are found nowhere in nature and
are thus patentable subject matter. Extremely pure 24 karat gold is found nowhere in
nature. Is it therefore patentable subject matter?
3.) Think back to Judge Boudin in Lotus v. Borland. He talked of the error costs of
defining copyrightable subject matter too broadly or too narrowly. What potential error
costs on either side does the Myriad court see when considering the question of
patentable subject matter?
4.) What is the strongest argument you can think of that we should define patentable
subject matter as broadly as we can and exclude as few subjects as possible? What is the
strongest argument in favor of limiting patentable subject matter and making sure there
cannot be patents on the most basic building blocks of knowledge? How should a court
choose between those two arguments?
5.) This case is about patents over diagnostics—the key utility here is a.) identifying a
particular gene sequence and b.) through epidemiological studies, showing that this gene
sequence is correlated with a greater or lesser propensity to some health outcome. Does
this not consist of simply correlating two, unpatentable, statements of fact or statistical
probability?
2.) Abstract Ideas, Business Methods and Computer Programs
James Boyle, The Public Domain
pp. 168–169
U.S. patent law had drawn a firm line between patentable invention and unpatentable
idea, formula, or algorithm. The mousetrap could be patented, but not the formula used
to calculate the speed at which it would snap shut. Ideas, algorithms, and formulae were