The Patent Doc blog reports that in its latest suit Myriad is alleging patent infringement against Invitrae this time for offering BRAC 1 & 2 genetic tests. Invitrae has responded with a suit asking for a declaratory judgment.
Patent Doc notes that Myriad has left several claims used in previous suits against genetic testing competitors out of this suit against Invitrae. The blog lists in exhausting detail all the various patents omitted and the claims that would have been previously cited from each.
The blog also notes that this curious omission may either reflect that Invitrae uses different methods in providing its genetic testing services or that Myriad may be changing its legal strategy in terms of what patent rights it asserts. Like its other suits, Myriad is asking the courts (in Utah) for a ruling of patent infringement, a preliminary and permanent injunction, an accounting and damages, delivery for destruction of all "products" that infringe any of the asserted claims, a finding of willful infringement, and a request for attorneys' fees, enhanced damages, and costs of suit.
Invitrae for its part filed a countersuit in California (like Quest and Counsyl before it) and seeks a declaratory judgment that its genetic diagnostic tests do not infringe any of Myriad's asserted patents and (or) that these patents are invalid. Invitae alleges that it "performs its sequencing using a very different approach" than the ways claimed in Myriad's asserted patents. In addition, like other defendants, Invitae invokes the Supreme Court (and Federal Circuit) decisions in AMP v. Myriad and the Supreme Court's Mayo v. Prometheus decision for its invalidity contentions.
"A vast portion of the landscape purportedly claimed by the Myriad Patents has been washed away in the wake of the Federal Circuit and Supreme Court’s decisions" in those cases, according to Invitae. Invitae also demands a jury trial, a declaration of non-infringement and invalidity and a finding that this is an exceptional case entitling Invitae to attorneys' fees and costs.
In summary, Myriad has now sued Ambry, Gene-to-Gene, Quest, GeneDx, and Invitae in Utah. Quest, Counsyl and Invitae have asked California courts for declaratory judgment.
Posted by Bruce Lehr Nov 29th 2013.