Patent Law Practice Center

AMP v. USPTO: The Latest Developments

Ryan Chirnomas, Partner in the Biotechnology group at Westerman, Hattori, Daniels and Adrian, sent in this article discussing the latest developments in the AMP v. USPTO case and what the Plaintiffs next move may be.

After the CAFC issued a decision in AMP v. USPTO on July 29, 2011, there was much speculation as to what would be the next move in this compelling case.  A petition for an en banc rehearing or a petition to the Supreme Court to grant a writ of certiorari seemed likely, but instead each party petitioned for a rehearing by the same three-judge panel.  Last week, the CAFC denied both of these without providing any further comments.  However, these petitions provide some insights as to how the parties’ positions on standing as well as the merits are evolving, and are summarized below.

Plaintiffs’ Petition for Panel Rehearing

On August 25, 2011, the Plaintiffs, represented by the ACLU and PubPat, filed a petition for a panel rehearing on both substantive issues and issues of standing.  As to the substantive issues, the Plaintiffs took issue with the majority’s reasoning that isolated DNA does not occur in nature. (more…)

Foley & Lardner On The ACLU/Myriad Decision

The following discussion comes from Courtenay C. Brinckerhoff and Jacqueline D. Wright Bonilla of Foley & Lardner.

Federal Circuit Decides Highly Anticipated “ACLU/Myriad” Gene Patenting Case – Subject Matter Patent-Eligibility of Isolated DNA and Diagnostic Methods Addressed Head-On

On July 29, 2011, in one of the most controversial and publicized biotech patent cases in many years, the Federal Circuit decided the “ACLU/Myriad” gene patenting case, formally known as Assn. Mole. Path. et al. v. USPTO et al. In a majority opinion by Judge Lourie, the Court addressed the case on the merits, after finding standing. The Court held all “isolated DNA” claims at issue patent-eligible, but held as patent-ineligible diagnostic method claims that in effect recite only “comparing” or “analyzing” DNA sequences. While it is anticipated that this ruling may be the subject of en banc review before the Federal Circuit and/or will ultimately find its way to the Supreme Court, today’s decision and its impact will undoubtedly be of great interest to everyone working in the biotechnology and diagnostic medicine fields.

Background

After hearing oral arguments on April 4, 2011, Judges Lourie, Bryson, and Moore issued opinions relating to the appeal of the March 29, 2010 summary judgment decision of the U.S. District Court for the Southern District of New York (Sweet, J.) that invalidated the challenged claims in seven Myriad patents as patent-ineligible under 35 U.S.C. § 101. (See Foley’s April 4, 2011 Legal News Alert: The Federal Circuit Hears Oral Arguments in Myriad Isolated DNA Case.) (more…)

AMP v. U.S.P.T.O.: Oral Argument at the Federal Circuit

Yesterday, the much anticipated oral argument in the AMP v. USPTO aka the Myriad Case took place at the Court of Appeals for the Federal Circuit.  Fortunately for us, Ryan B. Chirnomas, Partner at Westerman, Hattori, Daniels & Adrian attended the argument and has passed along this article summarizing the day’s events.

On April 4, 2011, the Appellant, Appellee and the U.S. Government presented oral argument before the Court of Appeals for the Federal Circuit in AMP v. USPTO, which deals with gene patenting.  The parties in this case are the Association for Molecular Pathology, along with many other medical organizations, doctors and patients on one side, and the U.S.P.T.O., Myriad Genetics, Inc., and the University of Utah Research Foundation on the other side.  Many amicus briefs have been filed as well.  The argument was heard by a panel consisting of Judges Bryson, Lourie and Moore, and was attended by approximately 200 people.   Due to the complexity of the subject matter and the presence of Government, the Court granted each side approximately 30 minutes of argument, instead of the usual 15 minutes.

Interestingly, although the parties seemed eager to discuss the merits, approximately half of the time for the Appellant and Appellee was spent discussing the issue of jurisdiction and standing.  In particular, Judge Moore seemed very interested in this issue.  The Appellants, led by Myriad, argued that there was no immediate controversy between the parties, since Myriad had not contacted any of the parties in over ten years.  However, Judge Moore questioned whether those parties previously threatened by Myriad were still refraining from making and using the claimed subject matter due to a continuing fear of litigation over the past decade.  (more…)