IP News

The Supreme Court has granted certiorari in Association for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, limited to a single question: Are human genes patentable? The case began in the Southern District of New York, where the plaintiff filed a declaratory judgment action seeking a decision that claims of Myriad's patents were invalid. The district court granted plaintiff's motion for summary judgment of invalidity, essentially holding that all claims to human genes are not patentable under 35 U.S.C. ' 101. 669 F. Supp. 2d 365, 369-76 (S.D.N.Y. 2010). The Federal Circuit heard the appeal, and after a rehearing in light of the Supreme Court's decision in Mayo Collaborative Services v. Prometheus, Inc., 566 U.S. __, 2012, held that Myriad's claims to isolated DNAs were eligible for patent protection, while the claims directed to comparing and analyzing gene sequences were not. Association for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303 (Fed. Cir. 2012).

The Supreme Court in the October Term 2012 also agreed to hear another patent case captioned Federal Trade Commission v. Watson Pharmaceuticals, Inc., No. 12-416. The case involves so-called “Pay for Delay” settlements ending pharmaceutical litigation under the Hatch-Waxman Act, wherein the patent holder pays the generic challenger to stay off the market for a longer period of time than provided for by statute. The Supreme Court will resolve a circuit split and decide “Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held). The FTC has argued that it is presumptively anticompetitive for an incumbent firm to pay a potential competitor to stay out of the market. Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). Justice Samuel Alito has recused himself from the case.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.