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AMP v. Myriad – Again!

The Court of Appeals for the Federal Circuit just decided the AMP v. Myriad case after the Supreme Court gavrilo’d (granted, vacated, and remanded) it in light of Mayo v. Prometheus. The case went back to the same three judges who had written the first, fractured, opinions.  And this time, they did it again.

We have two slightly different takes on this set of decisions and what they mean.  The first (below this, which was posted second) comes from our new CLB fellow, Jake Sherkow. The second (which was posted first – reverse chronological ordering in blogs can get confusing) is from one of his predecessors, our former CLB fellow, current CLB non-resident fellow, and Associate Professor of Law at Thomas Jefferson School of Law, Brenda M. Simon.

This is your chance to weigh in on these issues.  I suggest people direct comments that are specific to each post to that post, while putting more general comments after this post.  And, to start the action, I want to ask Brenda and Jake (and anyone else reading) two questions:

1.  En banc?  Will the CAFC (if asked) take this case en banc and, if so, what will it do?

2.  The Court?  Assume these opinions are not modified by en banc consideration.  What would the Supreme Court make of it – appropriate application of its Prometheus opinion to the facts of this case, rank mutiny, or something in between?

Hank Greely

3 Responses to “AMP v. Myriad – Again!”

  1. Jacob S Sherkow says:

    Thanks for the opportunity, Hank! In response:

    1. I’d be surprised if AMP was re-argued en banc. Of the last two major patentability cases to go to the Court, KSR was not reheard en banc, and Bilski was a sua sponte en banc hearing in the first instance. Because AMP is the result of litigation, as opposed to an appeal of the BPAI, it has more in common with the former than the latter. For those non-panel Judges who agree with the decision, they may want to leave well enough alone. And for those non-panel Judges who disagree with the decision, they may want to provoke certiorari earlier–holding another hearing at the primary appellate level would only slow things down. Given the Supreme Court’s penchant for reversing the Federal Circuit, I think only a small minority of Judges would want to be on an en banc panel whose opinion–regardless of which way it comes out–will certainly be criticized by the Court.

    2. Somewhere in between. I think the Court will affirm the Federal Circuit’s invalidation of Myriad’s method claims but take issue with the way the appellate court dealt with the distinctions between DNA types. As Judge Moore’s concurrence seems nuanced–something the Supreme Court likes in patent law–I wouldn’t be surprised if the majority opinion from the Court ends up sounding similar. I do think the Court will make much of the structure/function distinction that Judge Lourie seems to think is important, i.e., that covalent cleavages matter more than sequence.

  2. Brenda Simon says:

    At your invitation, Hank, I’ll engage in the risky business of predicting the future:

    1. Given the interest in the Myriad litigation, I would not be surprised if the Federal Circuit decided to hear it en banc. By rehearing the case, the full Federal Circuit can refine the application of Prometheus, making the case less attractive for the Supreme Court to take. Recent cases heard en banc by Federal Circuit, such as Ariad v. Lilly and Therasense v. Becton Dickinson, suggest this might be the best way to limit the application of Prometheus and avoid involving the Supreme Court any further.

    2. Assuming the decision is not changed by en banc rehearing, I would hate to be in Myriad’s position. Considering that Prometheus was decided 9-0, and the strong public sentiments about this case (see the Solicitor General’s amicus brief), there’s a risk that the Court might alter Chakrabarty in a way that would fundamentally change the eligibility test for the worst.

  3. hgreely says:

    Brenda S. Simon says:

    At your invitation, Hank, I’ll engage in the risky business of predicting the future:

    1. Given the interest in the Myriad litigation, I would not be surprised if the Federal Circuit decided to hear it en banc. By rehearing the case, the full Federal Circuit can refine the application of Prometheus, making the case less attractive for the Supreme Court to take. Recent cases heard en banc by Federal Circuit, such as Ariad v. Lilly and Therasense v. Becton Dickinson, suggest this might be the best way to limit the application of Prometheus and avoid involving the Supreme Court any further.

    2. Assuming the decision is not changed by en banc rehearing, I would hate to be in Myriad’s position. Considering that Prometheus was decided 9-0, and the strong public sentiments about this case (see the Solicitor General’s amicus brief), there’s a risk that the Court might alter Chakrabarty in a way that would fundamentally change the eligibility test for the worst.

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