Myriad Genetics Files Infringement Suit Against Gene by Gene for Genetic Diagnostic Testing of BRCA Genes Hidden Field

by McDonnell Boehnen Hulbert & Berghoff LLP

MyriadA day after Myriad Genetics sued Ambry Genetics for patent infringement, the company filed suit in the District of Utah, Central Divisions against Gene by Gene Ltd. (Case No. 2:13-cv-00643-EJF; complaint).  The complaint is nearly identical to Myriad's complaint against Ambry Genetics, and once again Myriad is joined by the University of Utah Research Foundation, the Trustees of the University of Pennsylvania, HSC Research and Development Limited Partnership, and Endorecherche Inc.

This Complaint alleges that:

Defendant, through its DNA Traits division, began offering its BRCA1 and BRCA2 analysis as part of its testing menu on June 13, 2013.  Defendant offers stand-alone tests comprising full gene sequencing and analyses for the BRCA 1 and BRCA 2 genes.

Defendant is infringing, contributing to the infringement of, and/or inducing others to infringe [each of the nine asserted patents] by making, manufacturing, promoting, marketing, advertising, distributing, offering for sale and selling and/or causing to be offered or sold BRCA1 and BRCA2 products that infringe at least the following claim of [each of the patents in suit] literally and/or under the doctrine of equivalents [].

The specific claims Myriad alleges are infringed include the following:  claim 6 of U.S. Patent No. 5,709,999; claims 6, 16 and 17 of  U.S. Patent No. 5,747,282; claims 7, 8, 12, 23, and 26 of U.S. Patent No. 5,753,441; claims 29 and 30 of U.S. Patent No. 5,837,492; claim 4 of U.S. Patent No. 6,033,857; claims 2, 3 and 4 of U.S. Patent No. 5,654,155; claims 2, 3, 4, 5, 6, and 7 of U.S. Patent No. 5,750,400; claim 5 of U.S. Patent No. 6,951,721; and claims 3, 4, 5, 6, 7, 8, 11, 14, 17, 18, 19 of U.S. Patent No. 7,250,497.  Missing from the complaint against Gene by Gene are allegations of infringement of claims 32 and 33 of U.S. Patent No. 6,051,379 asserted in the complaint Myriad filed yesterday against Ambry Genetics.

Gene by GeneOnce again, Myriad and its co-plaintiffs request judgment of patent infringement, an 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, as well as a jury trial.

The genetic diagnostics community awaits the identity of the next of its members who announced plans to market BRCA gene testing that Myriad decides to sue.  It appears that Myriad is serious about protecting its intellectual property until the company's patents expire over the next few years.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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