AMP v. USPTO -- Briefing Update III

By Donald Zuhn --

With the help of Patent Docs readers, we have been trying to collect copies of all of the briefs that have been filed in the Association of Molecular Pathology v. U.S. Patent and Trademark Office ("Myriad") case and make them available on our site.  Of the thirty amicus briefs that have been filed in this case, seventeen briefs were filed in support of Defendants-Appellants and/or reversal, twelve briefs were filed in support of Plaintiffs-Appellees and/or affirmance, and the position of one brief remains to be determined (Patent Docs has not yet obtained a copy of this brief).  Amici supporting Defendants-Appellants and/or reversal are:

• Alnylam Pharmaceuticals, Inc. in support of Defendants-Appellants supporting reversal (brief) -- see Patent Docs post

• American Intellectual Property Law Association (AIPLA) in support of reversal, but in support of neither party (brief) -- see Patent Docs post

• Animal Health Institute and Merial Ltd. in support of Defendants-Appellants and in support of reversal

• Biotechnology Industry Organization (BIO) and the Association of University Technology Managers supporting reversal (brief) -- see Patent Docs post

• Boston Patent Law Association in support of Defendants-Appellants and reversal of summary judgment (brief)

• CropLife International in support of neither party (brief)

• Genetic Alliance supporting reversal, but not in support of either party (brief) -- see Patent Docs post

•  Genomic Health Inc., Celera Corp., XDx Inc., Target Discovery Inc., the Coalition for 21st Century Medicine, and Burrill & Co. in support of Defendants-Appellants (brief)

• Gilead Sciences, Inc. and BioGenerator in support of Defendants-Appellants and urging reversal (brief)

• Christopher M. Holman and Robert Cook-Deegan in support of neither party (brief) -- see Patent Docs post

• Intellectual Property Owners Association (IPO) in support of neither party (brief) -- see Patent Docs post

• Kane Biotech, Inc. in support of Defendant-Appellant and reversal (brief)

• Novartis Corp. in support of Defendant-Appellant (brief)

• Pharmaceutical Research and Manufacturers of America in support of Defendant-Appellant Myriad Genetics, Inc. (brief)

• Rosetta Genomics, Ltd., Rosetta Genetics, Inc., and George Mason University in support of Defendants-Appellants supporting reversal (brief) -- see Patent Docs post

• United States in support of neither party (brief) -- see Patent Docs post

• University of New Hampshire School of Law in support of Appellants (brief) -- see Patent Docs post

Amici supporting Plaintiffs-Appellees and/or affirmance are:

• AARP in support of Plaintiffs-Appellees and arguing for affirmance (brief) -- see Patent Docs post

• American Medical Association, American Society of Human Genetics, American College of Obstetricians and Gynecologists, American College of Embryology, and the Medical Society of the State of New York in support of Plaintiffs-Appellees and arguing for affirmance (brief)

• Canavan Foundation, Claire Altman Heine Foundation, March of Dimes Foundation, Massachusetts Breast Cancer Coalition, National Organization for Rare Disorders, National Tay-Sachs, and Allied Diseases Association in support of Plaintiffs for affirmance (brief)

• Cancer Council Australia and Luigi Palombi supporting affirmance (brief)

• Professor Andrew Chin in support of plaintiffs-appellees supporting affirmance

• Eileen M. Kane in support of Plaintiffs-Appellees and affirmance (brief)

• Erika R. George and Kali N. Murray in support of AMP et al. (brief)

• International Center of Technology Assessment, the Indigenous Peoples Council on Biocolonialism, Greenpeace, Inc., Friends of the Earth, and the Council for Responsible Genetics in support of Plaintiffs-Appellees (brief)

• National Women's Health Network, the Asian Communities for Reproductive Justice, the Center for Genetics and Society, Generations Ahead, the Pro-Choice Alliance for Responsible Research, and Alliance for Human Biotechnology in support of Plaintiffs-Appellees (brief)

• Richard Gold, James P. Evans, and Tania Bubela in support of Appellees and affirmance (brief)

• Southern Baptist Convention in support of Plaintiffs-Appellees and arguing for affirmance (brief)

• Universities Allied for Essential Medicines in support of Plaintiffs-Appellees supporting affirmance (brief)

Finally, we have not obtained a copy of one brief that was filed in the case, and as a result, we have yet to assign this brief to either of the above groups:

• Federation Internationale Des Conseils En Propriete Industrielle in support of neither party

In addition to the above brief, we have also not been able to secure copies of the briefs filed by amici Animal Health Institute and Merial Ltd. or amicus Professor Andrew Chin.  In our last update regarding the briefing in this case, it appeared that Professor Chin submitted a brief as one of the Scholars of Biotechnology Patent Law in support of Plaintiffs-Appellees supporting affirmance (brief).  However, a check of the PACER briefs screen for this case indicates that the brief served on December 7 was rejected on December 15.  The brief served by Professor Chin on December 28, however, is shown as being filed on that same date.

With regard to the parties to the appeal, Defendants-Appellants filed their opening brief on October 22, 2010 (see "Myriad Files Appeal Brief in AMP v. USPTO"); Plaintiffs-Appellees filed their brief on November 30, 2010 (see "AMP v. USPTO: Appellees' Brief"); and Defendants-Appellants filed their reply brief on December 22, 2010 (Patent Docs post forthcoming).

Patent Docs will try to provide summaries of as many of the above amicus briefs as possible prior to the Federal Circuit's decision in this case.  We thank a number of our readers for kindly providing us with, or alerting us to, many of the amicus briefs listed above.

Comments

[6]

Let me ask you guys a question. Why, do you reckon, did congress never pass a law specifically to promote the medicinal arts? I mean, just as a general matter, for all these centuries to have gone by and them to never thought of it seems silly to me. Was there never any lobbyists promoting a patent act, or something comparable, for the medicinal arts? Anyone with any historical knowledge on the subject? Especially on the time around 1800-1920?

Did congress not feel that it would benefit the medicinal arts to have such an act in place? Did they simply never think to do it?

Perhaps doctors never btched and whined about protecting their industry with such a tool, as artisans in the useful arts did, back in the day? Perhaps congress felt it would be unethical?

Surely the topic must have been raised at some point.

[Copyright Attorney]

The patent office has issued supplementary guidelines for examining claims in patent applications for compliance with 35 U.S.C. §112 ¶2. The PTO thinks "it is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter." The guidelines are effective as of today. Written comments are accepted until April 11, 2011. "No public hearing will be held."