[author: Kevin E. Noonan]

The Federal Circuit today denied Defendant Myriad Genetics' motion, styled as "Appellant's Suggestion of Mootness, or, in the Alternative, Motion to Remand," seeking to reopen the question of whether Dr. Harry Ostrer continues to have standing to bring the lawsuit (see "Myriad Files Motion 'Suggesting' Mootness or Seeking Remand in AMP v. USPTO").  As will be recalled, the Federal Circuit held that only Dr. Ostrer among all the named plaintiffs had standing, because he asserted he was “ready, willing and able” to practice the claimed BRCA genetic diagnostic methods should the Court affirm the District Court's decision invalidating the claims at issue.  Myriad contended that Dr. Ostrer's change in academic affiliation stripped him of the ability to perform genetic diagnostic tests for the BRCA mutations, and thus that the Court should either dismiss the case or remand for a determination by the District Court on Dr. Ostrer's status.

Of course, even that eventuality might have proven unavailing for having the case dismissed, since plaintiffs had also asserted unconstitutionality claims (under the First and Fourteenth Amendments) based on the USPTO granting patents that interfered with a woman's ability to obtain information about her genetic health.  A motion to dismiss by the PTO was denied on the grounds that the women had no other recourse to a remedy other than the lawsuit.  The District Court avoided addressing that issue, however, and dismissed the USPTO from the case when making its decision, under the principle that constitutional questions should be avoided if the matter can be resolved by applying the appropriate statute (or, as here, deciding that the government action was contrary to the statute).

Opening party briefs and briefs by any amici remain due on June 15th.