Patent Plea Ping Pong

A genetic testing firm accused of infringing upon Myriad Genetics’s gene patents fights back in an attempt to wipe other patents out.

Kerry Grens
Aug 21, 2014

WIKIMEDIA, HAKUNAMATATA1Last year, Myriad Genetics launched a suite of lawsuits against competing firms that began to offer genetic testing after the Supreme Court invalidated some of Myriad’s gene patents. This week (August 18), one of the defendants, GeneDx, struck back with an attempt to nullify other patents held by Myriad.

GeneDx took advantage of a new provision in the America Invents Act of 2011 called inter partes review (IPR), which allows a challenger to petition the US Patent and Trademark Office (USPTO) if a patent is based on information previously published.

Few life sciences patents have been challenged in such a way, Richard Bone, a partner with VLP Law Group who isn’t involved in the case, told the National Law Journal. “This is going to be a high profile set of [inter partes review] petitions,” he said. “The broader community is looking at it.”

Eleven patents—centered around three cancer-associated genes: BRCA1, BRCA2, and MUTYH—are implicated in the IPR brought on by GeneDx. According to GeneDx, the firm is the first among those sued by Myriad to have taken advantage of the provision. Eldora Ellison, the director of Sterne, Kessler, Goldstein & Fox P.L.L.C., which is representing GeneDx, said in a press release: “The use of IPRs as a parallel procedure in patent litigation is a proven method to deal with highly technical issues . . . because the USPTO has expertise in adjudicating technical matters.”

Meanwhile, Myriad will continue to protect its patents in court. “We continue to believe that our patents are valid and enforceable,” Myriad spokesperson Ron Rogers told GenomeWeb Daily News in a statement.