The patentability of human genes is without a doubt one of the hottest issues before the U.S. Court of Appeals for the Federal Circuit , which in April will hear Myriad Genetics’ appeal of a Manhattan federal district court ruling that its patents on two gene mutations are invalid. Last November we told you that the Justice Department had stunned the patent bar with a brief supporting Judge Robert Sweet’s finding that genes, in and of themselves, are not patentable. Now comes word that when a three-judge Federal Circuit panel hears the Myriad appeal this spring, acting Solicitor General Neal Katyal will himself present the government’s argument, according to a Feb. 10 letter from the acting SG to the court clerk of the Federal Circuit.

This is apparently the first time an SG has argued at the Federal Circuit–and is particularly notable because Katyal will appear instead of the solicitor general of the U.S. Patent and Trademark Office, which was a defendant in the case at the trial court level. (The PTO did not appeal Judge Sweet’s ruling.) There’s been a lot of talk among patent lawyers that the PTO–which has a policy of granting patents on genes–and the Justice Department don’t agree on the issue.

“It’s unprecedented, to my knowledge, for the Solicitor General to argue in the Federal Circuit on a matter of patent and trademark policy,” said Edward Reines of Weil, Gotshal & Manges (who’s not involved directly in the Myriad case but told us about Katyal’s letter to the Federal Circuit clerk). “Gene patents are such a highly charged topic that, apparently, the Justice Department isn’t willing to leave it to patent office experts.”

Christopher Hansen of the American Civil Liberties Union, who last March won the controversial lower court ruling that genes are not patentable, told us he’s very pleased to have the acting SG’s support in oral arguments before the Federal Circuit. “This suggests the federal government believes it’s important to prevail in the key issue in the case: Are genes patentable?” Hansen said.

“There have been several hints to suggest the PTO doesn’t share the view of the Justice Department,” Hansen continued, noting, for instance, that no PTO lawyer’s name appears on the Justice Department’s brief. “We don’t know for sure. But the federal government speaks with one voice.”

At the Myriad appeal, the voice will be that of acting SG Katyal, endorsing the ACLU’s position.
Myriad appellate counsel Gregory Castanias of Jones Day told us Katyal “still only represents the Justice Department,” not the Patent and Trademark Office. “I don’t attribute any particular significance to [the acting SG's decision to argue the appeal himself] other than that it’s a case the acting solicitor general finds interesting and want to argue,” Castanias said. “We’ll be interested to hear what he has to say at the argument.”
This story originally appeared in The Am Law Litigation Daily, a Corporate Counsel sibling publication.