11 AIPLA

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American Intellectual Property Law Association

Recent cases citing Myriad and their influence on practice

Joerg-Uwe SziplGriffin and Szipl, P.C.

_____

AIPLA IP Practice in Japan Committee

Meeting with the Intellectual Property High Court

Tokyo, Japan, April 9, 2014

Association For Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) • Federal Circuit (689 F.3d 1303 (Fed. Cir. 2012) ruled on three types

of claims

– Isolated DNA coding for BRCA polypeptides (gene claims)

(valid)

– Isolated DNA having a specific sequence (cDNA claims)(valid)

– Isolated DNA having at least 15 nucleotides of (cDNA) sequence

(probe claims) (valid)

– Method of screening tumor samples requiring comparing BRCA

gene from tumor sample with BRCA gene from non-tumor

sample (invalid).

– Method of screening potential cancer therapeutics using

transformed eukaryotic host cells (valid)2

Myriad Genetics, Inc.

• Supreme Court granted review on the issue of whether the isolated DNA claims were patentable subject matter under 35 U.S.C. §101.

• Court held: “Genes and the information they encode are not patent eligible under §101 simple because they have been isolated from the surrounding genetic material”.

• cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In this situation, a short strand of cDNA may be indistinguishable from natural DNA.

• What was not decided:– Patent eligibility of method claims– Patent eligibility of probes and primers

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In re BRCA1-and BRCA2-based Hereditary Cancer Test Patent Litigation, 2014 WL

931057 (D. Utah 2014)• Decision of the District Court denying plaintiff’s motion

for preliminary injunction.• Myriad, after the Supreme Court decision, sued

defendants including Ambry Genetics and sought preliminary injunction to stop them from selling tests to screen BRCA1 and BRCA2 genes

• Plaintiff seeking preliminary injunction must show– Likelihood of success on the merits– Likelihood of irreparable harm– Balance of equities in movant’s favor– Injunction is in the public interest

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In re BRCA1• Plaintiffs are likely to suffer irreparable harm

– Price erosion and market share.– Loss of remainder of patent term.– Defendants unlikely to pay significant damages.

• Harm to Defendants (going out of business) outweighs harm harm Plaintiffs are likely to suffer without an injunction.

• Public interest does not clearly favor an injunction.• Plaintiffs are not likely to succeed on the merits.

– Defendants have raised substantial questions concerning whether Plaintiffs’ patents claim patent eligible subject matter.

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In re BRCA1• Patent’s primer claims are drawn to ineligible subject

matter– Isolated DNA is patent ineligible insofar as the

location and order of the nucleotides existed in nature.

– That is true whether that DNA is cleaved, genomic DNA, or synthetic primers and probes with the same encoded information.

– Probes and primers, although synthetically designed, are not markedly different from naturally occurring DNA.

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In re BRCA1• Plaintiff’s method claims are drawn to patent ineligible

subject matter– Ruling consistent with the holding of the Federal

Circuit that was not considered by the Supreme Court– Plaintiff argued that claims apply the BRCA1 and

BRCA2 genes to apply physical steps that were not well-understood, routine or conventional at the time the time the patents were filed.

– Court held that added steps were conventional.– Court held that the claims preempt all practical

application of the discovery of the BRCA1 and BRCA2 genes, because they employ PCR, the most widely used method of gene amplification, to the scientific principle that certain gene mutations make cancer more likely.

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Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296 (Fed. Cir. 2013)

• Court reviewed District Court denial of a preliminary injunction

• Patent related to test for certain genetic mutations (e.g., Downs Syndrome) by isolating fetal paternal DNA (cffDNA) from maternal blood serum

• Claims included steps of amplifying “paternally inherited nucleic acid” and detecting the presence of such DNA

• Court remanded issue of infringement in view of improper claim interpretation.

• Price erosion as irreparable harm was discounted by District Court.

• The fact that Defendant would be put out of business from injunction does not control decision.

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Aria Diagnostics, Inc. v. Sequenom, Inc., 2013 WL 5863022 (N.D. Cal. 2013)

• District Court considered cross motions for summary judgment.

• Court grants summary judgment on invalidity of the claims– The claims apply only conventional techniques to the

discovery of paternally inherited cffDNA.– Even though there may be alternative ways of

detecting cffDNA, these alternatives are not practical or commercially viable.

– Claims covering the only commercially viable way of detecting the cffDNA carry a substantial risk of preempting all practical uses of it

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Genetic Technologies Ltd. V. Agilent Technologies, Inc., 2014 WL 941354

(N.D.Cal. 2014)• Defendant seeks to dismiss complaint under Rule 12(b)

(6) for failing to state a claim upon which relief could be granted.

• Lack of claim was based on the assertion that the claims were not directed to patent eligible subject matter.

• Patentee made discovery that non coding regions of DNA were correlated to mutations in the coding regions of DNA, admittedly a non patentable scientific principle

• Parties dispute whether the remaining steps, i.e., using a primer pair to amplify a non-coding intron sequence amount to well-understood, routine, or conventional techniques at the time the patent was filed.

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Genetic Technologies Ltd.

• Federal Circuit test of whether a claim is meaningfully limited:– Preempts all applications of the natural law.– Contains only insignificant post solution activity.– Provides no real direction.– Requires a particular machine or implements a

transformation of matter.• Defendant has not shown by clear and convincing

evidence that the claims are directed to non-patentable subject matter.

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Thank you

Joerg-Uwe SziplGriffin and Szipl, P.C.

Arlington, VA, USA

Szipl@Szipl.com

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