Association for Molecular Pathology v. United States Patent & Trademark Office

NOTE: This order is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

THE ASSOCIATION FOR MOLECULAR
PATHOLOGY,
THE AMERICAN COLLEGE OF MEDICAL
GENETICS,
THE AMERICAN SOCIETY FOR CLINICAL
PATHOLOGY,
THE COLLEGE OF AMERICAN PATHOLOGISTS,
HAIG KAZAZIAN, MD,
ARUPA GANGULY, PHD, WENDY CHUNG, MD,
PHD, HARRY OSTRER, MD,
DAVID LEDBETTER, PHD, STEPHEN WARREN,
PHD, ELLEN MATLOFF, M.S.,
ELSA REICH, M.S., BREAST CANCER ACTION,
BOSTON WOMEN’S HEALTH BOOK COLLECTIVE,
LISBETH CERIANI,
RUNI LIMARY, GENAE GIRARD, PATRICE
FORTUNE,
VICKY THOMASON, AND KATHLEEN RAKER,
Plaintiffs-Appellees,
v.
UNITED STATES PATENT AND TRADEMARK
OFFICE,
Defendant,
and
MYRIAD GENETICS, INC.,
Defendant-Appellant,
ASSOCIATION FOR MOLECULAR v. PTO 2

and
LORRIS BETZ, ROGER BOYER, JACK BRITTAIN,
ARNOLD B. COMBE,
RAYMOND GESTELAND, JAMES U. JENSEN,
JOHN KENDALL MORRIS,
THOMAS PARKS, DAVID W. PERSHING, AND
MICHAEL K. YOUNG,
IN THEIR OFFICIAL CAPACITY AS DIRECTORS
OF THE UNIVERSITY OF UTAH RESEARCH
FOUNDATION,
Defendants-Appellants.
__________________________

2010-1406
__________________________

Appeal from the United States District Court for the
Southern District of New York in case no. 09-CV-4515,
Senior Judge Robert W. Sweet.
__________________________

ORDER
__________________________

On March 26, 2012, the Supreme Court of the United
States vacated this court’s judgment and remanded the
case to this court for further proceedings in light of Mayo
Collaborative Services v. Prometheus Laboratories, Inc.,
132 S.Ct. 1289 (2012).
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The court’s opinion of July 29, 2011, is vacated, the
mandate of this court issued on September 23, 2011, is
recalled, and the appeal is reinstated.
3 ASSOCIATION FOR MOLECULAR v. PTO

(2) The parties are requested to file simultaneous
supplemental briefs, not exceeding 20 pages, not later
than June 15, 2012, addressing the following issue: What
is the applicability of the Supreme Court’s decision in
Mayo to Myriad’s isolated DNA claims and to method
claim 20 of the ’282 patent?
(3) An original and eleven copies of supplemental
briefs shall be filed, and two copies of each brief shall be
served on opposing counsel.
(4) Briefs of amici curiae will be entertained, limited
to 15 pages and due not later than June 15, 2012, and any
such amicus briefs may be filed without consent and leave
of court but otherwise must comply with Federal Rule of
Appellate Procedure 29 and Federal Circuit Rule 29. The
United States is expressly invited to file an amicus brief.
(5) Oral argument will be held at 10:00 a.m. on July
20, 2012.

FOR THE COURT

April 30, 2012 /s/ Jan Horbaly
Date Jan Horbaly
Clerk

cc: Gregory A. Castanias, Esq.
Christopher A. Hansen, Esq.