17 June 2013

Life Interventions

This entry is delayed and shorter than usual thanks to various bits of Life. No, the real stuff, not the cardboardy cereal that even Mikey likes. (On one of those aspects of Life: When someone tells you that you've got your facts wrong, assh*le, don't try to pretend that valid confirmation of those facts consists of going back to the very same source that gave you the misinformation the first time around and getting him/her to repeat the misinformation he/she gave you before... especially when the result of your spouting of misinformation was libellous. I shouldn't be surprised; you've been pulling this particular sh*t for decades; but I thought that my warning that you had your facts wrong was clear enough.)

I do want to take a moment for a couple of thoughts on patenting of both human genes and their products. Although the news cycle has spun around elsewhere, this is actually an area that authors should pay attention to — not just for their health (as important as that may be), but for their work. The Supreme Court's decision in Myriad (PDF) last Thursday concerned the eligibility for patentability of both human genes and therapeutic, "corrected" versions of human genes. The actual result was predictable... based on a two-decade-old copyright case cited nowhere in the opinion. As the Supreme Court has previously said about copyright — the authority for which is in the same Constitutional clause as that for patents:

Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl. 8, of the Constitution, which authorizes Congress to "secur[e] for limited Times to Authors … the exclusive Right to their respective Writings." In two decisions from the late 19th century—The Trade-Mark Cases and Burrow-Giles Lithographic Co. v. Sarony—this Court defined the crucial terms "authors" and "writings." In so doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.

In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a particular work to be classified "under the head of writings of authors," the Court determined, "originality is required." The Court explained that originality requires independent creation plus a modicum of creativity: "[W]hile the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like."

In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word "authors." The Court defined "author," in a constitutional sense, to mean "he to whom anything owes its origin; originator; maker." As in The Trade-Mark Cases, the Court emphasized the creative component of originality. It described copyright as being limited to "original intellectual conceptions of the author," and stressed the importance of requiring an author who accuses another of infringement to prove "the existence of those facts of originality, of intellectual production, of thought, and conception."

The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today. It is the very "premise of copyright law." Leading scholars agree on this point. As one pair of commentators succinctly puts it: "The originality requirement is constitutionally mandated for all works."

It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations. "No one may claim originality as to facts." This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: The first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who discovers a fact is not its "maker" or "originator." "The discoverer merely finds and records." Census takers, for example, do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. The same is true of all facts—scientific, historical, biographical, and news of the day. "[T]hey may not be copyrighted and are part of the public domain available to every person."

Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement.

Feist Pubns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346–48 (1991) (citations omitted). This reasoning is outcome-determinative for Myriad, because any result other than the one the Court reached in Myriad would have been inconsistent... and led to more litigation down the road.

That does not, however, explain why and how the Court determined that even though no patent protection could apply to the extracted human genome, including all of its natural artifacts, under the patent-law doctrine of "eligible subject matter" (the direct counterpart of the fact/arrangement-of-facts distinction made in Feist concerning "originality"), that is not the end of the discussion. Had Justice Scalia had any knowledge whatsoever of basic molecular genetics, he would have seen this, too. All this "splitting of the baby" does is send it back to the lower court for further analysis… because "eligible subject matter" does not compel issuance of a patent, or even validity of an already-issued patent. There's still obviousness to overcome. In the context of this specific subject, the next question must be "Would it have been obvious, to a practitioner skilled in the art of DNA-sequencing diagnosis and/or therapies, to use a 'healthy' gene from which introns had been excised to reach this particular result, if that practitioner had the factual knowledge of the underlying genetic sequences?" If the answer to this question is any variety of "yes" (including most forms of "maybe"), then this particular patent fails for obviousness. The analogy to the Feist copyrightability fact pattern is pretty clear: Is the particular "original selection or arrangement" actually chosen to protect the telephone book from lower-cost-provider copying obvious to a practitioner skilled in the arts of printing telephone books? Note that this is a somewhat higher standard than that in the Copyright Act… even if it does have obvious (pardon the pun) parallels in the scenes á faire doctrine, among others.

Last, a note about Justice Scalia's admitted educational deficit. It reflects one of the real blind spots of the organized bar: It is arrogantly convinced that because it knows the law (and has that knowledge exclusively), it doesn't have to know the context in which the law operates. More bluntly, the bar believes that its judgments on law can assist in resolving or preventing disputes in areas it refuses to try to understand. The shoddiness of much law-and-economics scholarship, in the eyes of many leading economists, is just one example. There is no excuse whatsoever for a Supreme Court that will be deciding issues founded on detailed, or even broad, scientific principles to be composed exclusively of persons with no background in the sciences above that of "rock-for-jocks" classes taken decades in the past… nor for a staff equally deficient. Nor for counsel equally deficient as a whole (not necessarily in this case). Both law school admissions and law school job-and-clerkship placements need to meet the business end of a 2x4 regarding their hostility to science and engineering (and particularly given the on-average substantially lower GPAs at the undergraduate level in those programs, which strongly influences law school admissions). If Justice Scalia really cares about his admission of fallibility and its potential effect on the validity of his judgments, he'll take care to ensure that at least one of his next hiring crop of clerks has at least an undergraduate minor (a degree may be too much to hope for) in the natural sciences. And the same goes for the other justices.