After reading Obergefell v. Hodges, 576 U.S.___(2015), (a copy is found at the end of this post) I was struck by Justice Robert’s dissent – which excoriates the majority for legislating from the bench and basing its opinion on “social policy.”
In AMP v. Myriad, Justice Roberts joined in a unanimous opinion holding that segments of DNA are patent-ineligible “natural products,” reversing a Fed. Cir. panel decision that held DNA to be patent-eligible as a novel chemical molecule.
But what if Justice Roberts disagreed with his brethren and penned a dissent? I have repeatedly taken the position that Myriad was decided on policy grounds, which required the Justices to decide that a novel chemical compound is not a “composition of matter” under s. 101, but is something else.
But what if Justice Roberts took umbrage with this logical disjunction and dissented? The following fictional account is liberally adapted from his dissent in Obergefell. It omits some material, mostly due to the fact that the Court was deciding a Constitutional question and not simply interpreting a statute to include or exclude one class of chemical compound from patentability. So bear with me on this attempt to rewrite history.
CHIEF JUSTICE ROBERTS, with whom JUSTICE SCALIA joins, dissenting:
“The majority make strong arguments rooted in social policy and considerations of consistency. They contend that a segment of DNA should be treated differently than other chemical compounds, because it is ‘concerned primarily with the information contained in the genetic sequence, not with the specific chemical composition of a particular molecule.’ Thus a segment of DNA can be excluded from patentable ‘compositions of matter’ falling within the scope of 35 USC s. 101, even though it does not exist as such in nature. That position has undeniable appeal, and is superficially in accord with laws passed by Congress to deny patents on human organisms.
“But this court is not a legislature. Whether patenting isolated DNA is a good idea should be of no concern to us. Under the Constitution, judges have power to say what the law is, not what it should be. The people who ratified the Constitution authorized the courts to exercise ‘neither force nor will but merely judgment.’
“Although the policy arguments for treating isolated DNA differently than other chemical molecules may be compelling, the legal arguments for requiring such a differentiation are not. The fundamental role that DNA plays in our bodies, even in shaping our identities, does not include a right to change the definition of matter so as to exclude segments of DNA from the universe of discoveries that can be patented. And the broad definition of “composition of matter” provided by our own precedent in Diamond v. Chakrabarty, that in turn has informed the USPTO policies and the decisions made by the lower courts such as In re Deuel can hardly be called irrational.[fn. ‘Similarly composition of matter has been construed consistent with its common usage to include all compositions of two or more substances and … all composite articles, whether they be the result of chemical union, or mechanical mixture, or whether they be gasses, fluids , powders or solids.’ Chakrabarty 447 US 303 (1980)]. Nor does our Constitution contain any definition of “composition of matter.”
“Today, however, the Court takes the extraordinary step of characterizing one class of chemical compound as no longer on the spectrum of patentable subject matter. Many people will rejoice at this decision, and I begrudge none their celebration. But for those who believe in a government of laws, not of men, the majorities approach is deeply disheartening. Supporters of bans on various aspects of biotechnology have achieved considerable success persuading their fellow citizens through the democratic process to adopt their view. While that does not completely end today, seven lawyers have closed the debate and enacted their own vision of what is, and is not, a novel composition of matter. Stealing this issue from the people will for many cast a cloud over biotechnology broadly, making other dramatic advances in science more difficult to accept.
“The majority’s decision is an act of will, not legal judgment. The exclusion it announces has no basis in the Constitution, the relevant statutes or this Court’s precedent. The majority effectively disclaims judicial caution and omits even a pretense of humility, openly relying on its desire to remake science according to its own new insight into the nature of DNA as the repository of humanity itself. As a result, the Court invalidates hundreds of issued patents and orders the transformation of a scientific truth that has formed the basis of science for millennia, form the early work of making useful chemicals from natural “extracts” to modern genomics. Just who do we think we are?
“It can be tempting for judges to confuse our own preferences with the requirements of the law. …’Accordingly courts are not concerned with the wisdom or policy of legislation.’….The majority today neglects that restrained conception of the judicial role. It seizes for itself a fundamental question in both science and patent law at a time when people are engaged in a vibrant debate on that question. And it answers that question based not on neutral principles of chemistry, as ably elucidated by the Federal Circuit, but on its own understanding of what DNA is and what it does. I have no choice but to dissent.”