Thursday, January 19, 2017

Intervening Change in DNA Patentability Law Negates Assignor Estoppel ​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s tuberculosis genetic detection patent encompassed unpatentable subject matter and found that assignor estoppel did not bar defendant from challenging validity because there had been an intervening change in law. "There can be no genuine dispute that [Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013)] significantly changed the legal landscape of DNA patentability. Indeed, [plaintiff] argued in an amicus brief to the Supreme Court during the Myriad proceedings that a ruling that isolated DNA sequences are not patent eligible would 'upset reliance interests' and jeopardize patents on 'DNA-based diagnostic tests.'. . . And while Myriad may not have overruled existing Supreme Court precedent because there was no Supreme Court precedent regarding DNA patentability to overrule, it reversed the Federal Circuit and sharply altered longstanding PTO practice and the jurisprudence of lower courts. This alteration in the law tips the balance of equities against application of assignor estoppel to [defendant], a company in privity with an inventor who assigned his rights at a time when the PTO was routinely granting DNA patents, decades before the Supreme Court significantly limited the scope of such patents."

Roche Molecular Systems, Inc. v. Cepheid, 3-14-cv-03228 (CAND January 17, 2017, Order) (Laporte, MJ)

No comments: