The AMP et al. v. USPTO et al. case decided this past week (aka Myriad II) puts a new twist on the dreaded words “We’re from the government and we’re here to help you.” In Myriad II it was the USPTO that was afflicted by the words “We’re from the Government Solicitor General’s Office and We’re Here to Help You.”
The Myriad case is unique in that the US Solicitor General’s Office pulled rank on the USPTO Solicitor’s Office for purposes of briefing and oral argument. In the first oral argument of Myriad at the Federal Circuit (Myriad I), the SG’s Office brought unintended comic relief to the proceedings by proposing a “magic microscope” test.
One of the first questions asked at the oral argument of Myriad II in July was whether the SG’s Office was still advocating such a test. Unwilling to distance itself entirely from its “magic microscope,” the SG’s Office stated that it still found the “magic microscope” to be a useful metaphor.
One thing that interested me about the oral argument of Myriad II was Judge Bryson’s comment that in the past the US Attorney General’s Office has allowed an administrative agency to file, as an appendix to the SG’s brief, a brief that dissents from the SG’s position. Judge Bryson cited the TVA v. Hill, 437 U.S. 153 (1978) case as one example. [Listen]. (Judge Bryson worked for the US Solicitor General’s Office before being appointed to the court and argued many cases at the Supreme Court.)
At any rate, I took Judge Bryson’s comment as a suggestion that the US Solicitor General’s Office should allow the PTO to file its own dissenting brief in any subsequent appeals of Myriad II. Whether the SG’s Office has enough confidence in the merits of its own position that it allows the PTO to file such a dissenting brief remains to be seen.
You can read the Federal Circuit’s Myriad II opinion here: [Link].
You can listen to the oral argument of Myriad II here: [Listen].
You can listen to the oral argument of Myriad I here: [Listen].