(Or, and then there was one were none)
By Kevin E. Noonan --
As discussed for the past month, Myriad has finally given up trying to defend its BRCA gene testing franchise. The one remaining matter, Myriad's case against GeneDx has settled, as announced by the company today.
However, GeneDx has not moved before the Patent Trial and Appeals Board (PTAB) to dismiss its inter partes review (IPR) challenge under the Leahy-Smith America Invents Act. Although IPR actions can be settled, they can also be pursued to their conclusions sua sponte by the Board. The patents at issue in that action are U.S. Patent Nos. 5,654,155; 5,753,441; 6,033,857; 6,051,379; 6,083,698; 6,951,721; 7,470,510; 7,563,571; 7,622,258; 7,670,776; and 7,838,237. While such a decision would likely be a waste of taxpayer time and money, there may be some sentiment within the Office (which seems to have taken to heart criticisms from the Supreme Court and elsewhere regarding granting "gene patents" in the first place) to render an invalidity decision once and for all on these patents. Of course, because IPRs are limited to patentability challenges under §§ 102 and 103, the Board could arrive at the (politically) anomalous result that Myriad's claims are patentable despite being patent ineligible under § 101. The PTAB has previously avoided this outcome in the Sequenom/Isis claims in an earlier IPR by refusing to permit claims to be amended in view of a district court's determination that the claims at issue in that IPR were patent ineligible under § 101, but those circumstances are unlikely to recur here.