Patent Cases and Public Controversies

INTRODUCTION A patent could be described as a private solution to a public problem--the government grants to an inventor a private exclusive right to his invention for a limited time in order to encourage the promotion of progress to benefit the public as a whole. (1) When someone infringes that private right, the patentee enforces his exclusive right in federal court by filing a civil action for patent infringement pursuant to 35 U.S.C. [section] 281. (2) But what happens when a member of the public wishes to challenge the merits of that private right? Some members of the public might like to practice the invention without consequence--this group could include competitors, hopeful market entrants, patent licensees, or even strangers to the patent owner. Other people might believe that the patent harms them and others (including the government sovereign itself) by restricting competition and limiting innovation or by offending on moral or ethical grounds. Because the traditional Article III inquiry in such cases revolves around the reciprocal (and often hypothetical) infringement case that could be brought by the patentee against the challenging party, conventional wisdom holds that the former group, the practicing public, would be welcome in federal court while the latter group, the non-practicing public, would not. Despite improbable chances for justiciability, (3) several recent cases challenge this conventional wisdom, revealing a trend in patent litigation whereby members of the public bring suits to challenge patents, including Ass'n of Molecular Pathology v. Myriad Genetics, Inc. ("AMP"), (4) Mama Cares Foundation v. Nutriset Societe Par Actions Cimplifiee ("Mama Cares'), (5) and Organic Seed Growers & Trade Ass'n v. Monsanto Co. ("OSGTA"). (6) In these public patent litigations, the declaratory plaintiffs seek to invalidate patents on a variety of grounds. In AMP and OSGTA, the declaratory plaintiffs claim the patents--gene patents in AMP and genetically modified food patents in OSGTA--are invalid on statutory subject matter grounds. (7) In Mama Cares, the declaratory plaintiffs claim that the patents, directed toward ready-to-eat therapeutic food products and processes, are invalid on other grounds of patentability (e.g., lack of novelty, non-obviousness, or inadequate disclosure). (8) In each case, the declaratory plaintiffs are not presently infringing the patents--the Mama Cares plaintiffs and some AMP plaintiffs desire to infringe; all of the OSGTA plaintiffs fear inevitable infringement sometime in the future. In all three cases, public interest groups, such as the American Civil Liberties Union and the Public Patent Foundation, support the declaratory plaintiffs in their quest for invalidation. The Court of Appeals for the Federal Circuit ("Federal Circuit") twice approved of jurisdiction in AMP[degrees] but found the OSGTA controversy moot. (10) A district court dismissed Mama Cares for lack of jurisdiction. (11) Each court came to a decision on jurisdiction (and therefore justiciability) by referring to the likelihood (or lack thereof) of an infringement suit by the patent owner and by citing the same Supreme Court and Federal Circuit precedent. However, the courts' views of that precedent and the Supreme Court's policy preference to encourage patent challenges raise questions regarding justiciability in patent cases and in public law cases generally. As discussed below, MedImmune, Inc. v. Genentech, Inc., the most recent case from the Supreme Court addressing declaratory judgment justiciability, instructs courts considering declaratory cases (including patent ones) to embrace the flexibility of Article III justiciability by simply asking whether a declaratory plaintiff has a sufficiently real and immediate legal dispute with the declaratory defendant. (12) A broad view of MedImmune's Article III jurisprudence in declaratory patent cases could facilitate public litigants challenging patents in courts. …