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DURIE TANGRI LLP DARALYN J. DURIE (SBN 16982s)

ddurie@durietangri. com

MARK A. LEMLEY (SBN 15s830)

mlemley@durietangri. com 217 Leidesdorff Street San Francisco, CA 94lll Telephone: 415-362-6666 Facsimile: 415-236-6300
t

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Nicholas Groombridg e Qtro hac vice application to be sribmitted) \ Rebecca Fett (tro hac vice application to be submitted) Josephine Young ro hac vice application to be submitted) PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP 1285 Avenue of the Americas \ New York, NY 10019-6064 ngroombridge@paulweiss. com

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IN t4
FO
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STATES DISTRICT COURT

N.RTTIERN

ai
COLINSYL,INIC.,

""'gT '3":. a g g 3 Nc
Case No

l7
Plaintiff,
18
V. T9

COMPLAINT FOR DECLATORY JUDGMENT

MYRIAD GENETICS,INC.,
20

JURY TRIAL DEMANDED

Defendant.

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23

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25

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COMPLAINT FOR DECLATORY JUDGMENT / CASE NO

Plaintiff Counsyl, Inc. ("Counsyi"), for its Complaint against Defendant Myriad Genetics, Inc.

2
3

("Myriad") alleges

as follows:

NATTIRE OF THE ACTION

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5

1.

This is an action brought by Counsyl to obtain declaratory judgment that Myriad has no

rights against Counsyl regarding the following patents pursuant to Federal Rules of Civil Procedure 57

6 7
8

and28U.S.C. $2201:

a.

U.S. Patent No. 5,709,999, entitled "LINKED BREAST AND OVARIAN

CANCER SUSCEPTIBILITY GENE," issued on January 20,1998 ("the '999 patent"). A true and
correct copy of the '999 patent is attached as Exhibit L

9
10
11

b.

U.S. PatentNo.5,747,282, entitled "ITQ-LINKED BREAST AND OVARIAN

CANCER SUSCEPTIBILITY GENE," issued on May 5, 1998 ("the'282 patent"). A true and correct
copy of the '282 patent is attached as Exhibit 2.

t2
13

c.

U.S. Patent No. 5,753,441, entitled "I7Q-LINKED BREAST AND OVARIAN

t4
15 16

CANCER SUSCEPTIBILITY GENE," issued on May 1 9, 1998 ("the ' 441 patent"). A true and correct
copy of the '441patent is attached as Exhibit 3,

d.

U.S. Patent No. 6,951,721, entitled "METHOD FOR DETERMINING THE

t7
18

HAPLOTYPE OF A HUMAN BRCA1 GENE," issued on October 4,20A5 ("the'721patent"). A true

and correct copy of the

'72I

pafent is attached as Exhibit 4.

19

e.

U.S. Patent No. 7,250,497, entitled "LARGE DELETIONS IN HUMAN BRCA1

20

GENE AND USE THEREOF," issued on July 31,2007 ("the'497 patent"). A true and con:ect copy

of

2I
22
23

the'497 patent is attached

as

Exhibit 5.

f.

U.S. PAtENt NO. 5,837,492, ENtitICd "CHROMOSOME 13-LINKED BREAST

CANCER SUSCEPTIBILITY GENE," issued on November 17, 7998 ("the'492 patent"). A true and
correct copy ofthe'492patent is attached as Exhibit 6.

24
25 26 27 28

g.

U.S. Patent No. 6,033,857, entitled "CHROMOSOME 13-LINKED BREAST

CANCER SUSCEPTIBILITY GENE," issued on March 7,2000 ("the '857 patent"). A true and correct
copy of the '857 patent is attached as Exhibit 7.

I
COMPLANT FOR DECLATORY ruDGMENT / CASENO.

-1
2
J

h.
attached as Exhibit 8.

U.S. Patent No. 6,05I,379, entitled "CANCER SUSCEPTIBILITY

MLIATIONS

OF BRCA2," issued on

April

18, 2000

("the'379 patent"). A true and correct copy of the '379 patent is

4
5

THE PRTIES

2.

Counsyl is a corporation organized and existing under the laws of the State of Delaware

6 7
8 9

with its principal place of business at 180 Kimball Vy'ay, South San Francisco, California 94080.
Counsyl is a technology company in the United States focusing on the development of genetic testing
and services for various hereditary diseases and traits, including, but not limited to, the development

of

genetic testing and services in connection with breast and/or ovarian cancer.

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11

3.

On information and belief, Myriad is a corporation organized and existing under the laws

of the State of Delaware with its principal place of business at 320 Wakara Way, Salt Lake City, Utah 84108. Oninfonnationandbelief,Myriadisanownerorco-ownerofthe'721,'497,and'379patents
and is an exclusive licensee of the

I2
13

'999,'282,'441,'492, and '857 patents. BACKGROUND

14

l5 l6
I7
18

4. 5. 6.

Counsyl is a technology company with the goal of making the human genome practically

usefrll for individuals making decisions about their life, family, and health.
Counsyl has developed and is prepared to launch genetic tests and related services related

to sequencing and analysis of BRCAI and BRCA2 genes. Prior to the priority dates of the '999, '282, '441, '721, '497 , '492, '857, and '379 patents,
and BRCA2 genes are associated

l9
20
2T

it was discovered that alterations in human BRCAI

risk ofbreast and/or ovarian cancer.
7

with an increased

22
23

On information and belief, Myriad contends that one or more claims of the'999,'282,

'441,'727,'497,'492, '857, and/or'379 patents coverisolated fragments of human BRCAI andBRCA2

genes, as well as methods of using the human
-B,R

24
25

CAI

and BRCA2 genes to screen and/or detect

alterations in those genes or to diagnose a predisposition for breast and/or ovarian cancer. On

26 27 28

informationandbelief,Myriadcontendsthatoneormoreclaimsofthe'ggg,'282,'441,'72I,'4g7,
'492,'857, and/or '379 patents cover methods of using BRCAI and/or BRCA2 genes in genetic tests and
related services, such as the sequencing and analysis af BRCAI and/or BRCA2 genes.
2 COMPLAINT FOR DECLATORY ruDGMENT / CASE NO.

---

8.
'7

Myriad has asserted that it owns and/or has the sole right to enforce tbe'999,'282,'441',

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a

21,' 497,' 492,' 857, and' 379 patents.

9.

Myriad itself claims that, by offering its allegedly patented testing services to breast

4
5

and/or ovarian cance patients and their family members, and by excluding any potential competitors

from being able to offer women any altematives to the Myriad test, Myriad has created an extensive
database of genetic variants of

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11

BRCAl

and

BRCA2. Since 2005, however, Myriad has kept the vital

publio health information in this database a secret, and has refused to share it with healthcare workers
and the

public. Thus, Myriad has effectively hindered the medical community from being able to use

patient data to fuither medical research and impeded the ability of clinicians to interpret genomic data.

10.
BRCA
'

Myriad has asserted that any company that makes, uses, sells, or offers to sell genetic tests

and related services using the BRCAI and/or BRCA2 genes, such as the sequencing and analysis

of

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and/or BRCA2 genes, faces the risk of suit for infringement of one or more claims of the '999,

282,' 44\,' 7 27,' 497,' 492,' 857, and' 37 9 patents.

1

T4 15 16 T7 18 19

1.

Certain claims of the '999,'282,'441,'492, and '857 patents have been the subject of a

prior patent litigation, which culminated in the review of the validity of those claims by the Supreme

Court. In its decision on June 13,2013,Associatiottfor Molecular Pathology v. Myrid Genetics,133

S.

Ct.2707,2013 V/L 2631062, the Supreme Court held that at least claims 1 and 5 of the'282 patent and claims

and 6 of the '492 patent directed to isolated human BRCA

and BRCA2 genes are

invalid for

lack of patentable subject matter under 35 U.S.C. $ 101. Moreovet, in the proceedings leading up to the
Supreme Court decision, the Federal Circuit had reviewed claim 1 of the '999 patent, claim 1 of the'441

20

2l
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23

patent, claims

and2 of the '857 patent directed to methods of using human BRCAI and BRCA2 genes

to detect alterations or to screen for alterations and held that those claims also are invalid for lack of
patentable subject matter under 35 U.S.C. $ 101. Ass'n

for Molecular Pathology v. U.S. Patent &

24
25 26 27 28

Tradentark Office,689 F.3d 7303, 1329 (Fed. Cir. 2012). That decision was not appealed by either parfy

12.

Nofwithstanding these rulings, Myriad has stated that it still intends to aggressively and

vigorously enforce the '999, '282, '44I, '721, '497 , '492, '857 , and'379 patents against any entity that
makes, uses, sells, or offers to sell genetic tests and relaJed senices using the BRCAI and/or BRCA2 genes, such as the sequencing and analysis of BRCAl and/or BRCA2 genes.

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COMPLAINT FOR DECLATORY JUDGMENT / CASE NO

-,-

13.

Numerous clinicians and entities performing research on BRCAI andl/or BRCA2 genes

2
^ J

have stated that Myriad has sent them cease and desist letters, effectively prohibiting routine screening

of

BRCAI and/or BRCA2 genes for research or clinical practice without a license to the '999, '282,'44I,
'

4
5

721,' 497,' 492,' 857, and'379 patents.

14.

After the Supreme Courl decision, two other entities, Ambry Genetics Corp. and Gene by
13

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8

Gene Ltd. , publicly stated on June

, 2013 , thaf they would begin offering their respective genetic tests

and related services that included sequencing and analysis of the BRCAI and/or BRCA2 genes.

In for

response, Myriad sued Ambry and Gene by Gene on July 9 , 2013, and July 10, 20 I 3, respectively,

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11

infringement of certain claims of the '999,'282,'44I,'72I,'497,'492, '857, and'379 patents. Those

suits have been consolidated and are pending in the District of Utah, Central

Division.

See Univ.

of Utah

Research Found. v. Ambry Genetics,lrc., No. 2:13-cv-000640 (D. Utah filed July 9, 2013) and Univ. (Jtah Research Found. v. Gene by Gene,No.2:13-cv-000640 (D. Utah filed July 10,2013).

of

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15.

Myriad's conduct, including Myriad's litigation history, puts at risk Counsyl's legal rights

and ability to market its genetic tests and related services related to sequencing and analysis of BRCAI
and BRCA2 genes.

16

16.

Counsyl has made a substantial research and development investment in improving

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18

genetic tests and providing more access at lower cost to related services connected with sequencing and analysis of BRCAI and BRCA2 genes. Accordingly, Counsyl seeks and is lawfully entitled to a declaratory judgment that at least one of the following claims is invalid and/or not infringed: claim 6

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21

of

the'999patent, claims 5 and 6 of the'282patent, claims 8,23,33 of the'44lpatent, claim 5 of the'721

patent, claims 1-20 of the '497 patent, claims
and claims 7-25,40-42 of the '379 patent.

5,9,29,30 of the '492patenf, claim 4 of the '857

patent,

22
23

17.

There is a definite, concrete, real and substantial conhoversy befween Counsyl and

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25

Myriad of sufficient iminediacy and reality to warrant the issuance of a declaratory judgrnent of at least
one of claim 6 of the '999 patent, claims 5 and 6 of the '282patent, claims

8,23,33 of the '441 patent,

26 27
28

claim 5 of the'727 patent, claims 1-20 of the '497 patent, claims 5,9,29,30 of the '492palent, claim 4 of the '857 patent, and claims l-25,40-42 of the '379 patent. A declaration of rights between the parties
is both appropriate and necessary to establish that Counsyl does not infnge any valid claim of the '999,
4 COMPLAINT FOR DECLATORY JUDGMENT / CASE NO.

'

282,' 44I,' 7 27,' 497,' 492,' 857, and'

37

9 patents.

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JURISDICTION AND VENUE

18.

This lawsuit is a civil action arising under the patent laws of the United States, 35 U.S.C.

4
5

100, et seq., and the Declaratory Judgment Act, 35 U.S.C. 220I. Accordingly, this Court has subject
matter jurisdiction pursuant to 28 U.S.C. $$ 1331 and 1338(a).

19.

This Court has personal jurisdiction over Myriad, by virfue of, irer alia, t having

7
8

conducted business in California, having availed itself of the rights and benefits of California law, and having engaged in substantial and continuing contacts with Califomia.

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20.

On information and belief, Myriad conducts substantial business in this judicial district

and regularly solicits business from, does business with, and derives value from goods and services

l1

provided to customers in this judicial district. For example, Myriad employs a significant sales and marketing force in this District, markets its tests to thousands of residents within this District, generates
signif,rcant revenues from this District, and has made significant investments in this District, including a $25 million strategic investment in Crescendo Bioscience based in South San Francisco, California, in

t2
13

14 15

20ll.

See, e.g.,

Myriad Genetics Makes Strategi.c Debt Investntent Witlt Exclusive Option to Acquire

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18

Crescendo Bioscience, Myriad Investor Relations Press Releases (Sept. 8, 2011),

http ://investor.myriad. com/releasedetail. cfm?ReleaseID:604
1

60.

21.

Venue is proper in this District pursuant to 28 U.S.C. $$ 1391(b) and (c) and 1400(b).

r9
20

COUNT

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '999 PATENT

2l
22
23

22. 23. 24. 25.

'999 patent.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-21.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfingernent of claim 6 of the'999 patent. Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing

24
25 26

claim 6 of the '999 patent as defined by 35 U.S,C. 27L

Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, or sale of its

27
28

genetic sequencing and analysis of the BRCAI gene does not directly or indirectly infringe claim 6 of the

COMPLAINT FOR DECLATORY JUDGMENT / CASE NO.

COUNT

II

2
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DECLARATORY JUDGMENT OF ITWALIDITY OF THE '999 PATENT

4
5

26. 27. 28.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-25.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

claim 6 of the '999 patent. Claim 6 of the '999 patent fails to meet one or more of the statutory requirements and,/or

6 7
8

conditions for patentability under the patent laws of the United States, including but not limited to 35 U.S.C. $$ 101-103, patenting.

lI2,

et seq., andlor under the

judicially created doctrine of obviousness-type double

9 10
11

29.

Counsyl hereby seeks a declaration that claim 6 of the '999 patent is invalid.

COUNT

III

T2 13

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF TIIE '282 PATENT

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15

30. 31. 32. 33.

Counsyl incorporates by reference the preceding averments set forth in paragraphs l-29.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfngement of at least one of claims 5 and/or 6 of the '282patent.

Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing

16

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T9

claims 5 and/or 6 of the '282patent as defined by 35 U.S.C. $ 271. Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, or sale of its
5

genetic sequencing and analysis of the BRCAI gene does not directly or indirectly infringe claims and/or 6 of the '282 patent.

20

2l
22
23

COUNT IV

DECLARATORY JUDGMENT OF INVALIDITY OF TIJE'282 PATENT

24 25 26 27 28

34. 35. 36.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-33.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

at least one of claims 5 and/or 6 of the '282 patent.

Claims 5 and/or 6 of the '282 pafent fail to meet one or more of the statutory requirements

and/or conditions for patentability under the patent laws of the United States, including but not limited to
35 U. S.C. $ $ 101- 103, 1I2, et seq., and/or under the judicially created doctrine of obviousness-type
6

COMPLANT FOR DECLATORY JUDGMENT / CASE NO.

double patenting.
37

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Counsyl hereby seeks a declaration that claims 5 and/or 6 of the '282 patent are invalid.

COUNT V

4
5

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '441 PATENT

38. 39. 4A.

claims 8, 23,

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-37.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

7
8

noninfringement of at least one of claims 8,23, and/or 33 of the '447 patent.

Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing
and/

9 10

or 33 of the' 441 patent as defined by 3 5 U. S.C . 27

l.

41.
and/or 33

Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, or sale of its

l1

genetic sequencing and analysis of the BRCAI gene does not directly or indirectly infringe claims 8, 23,

l2
13 T4

ofthe'441 patent.
COUNT VI

DECLARATORY JUDGMENT OF INVAIIDITY OF THE '441 PATENT

l5
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42. 43. 44.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-41.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

at least one of clairns 8,23, and/or 33 of the

'44I patent.

Claims 8,23, and/or 33 of the '441 patent fail to rneet one or lnore of the statutory

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21

requirements and/or conditions for patentability under the patent laws of the United States, including but not limited to 35 U.S.C. $$ 101-103,112, et seq., and/or under the judicially created doctrine obviousness-fype double patenting.

of

22
23

45.
invalid.

Counsyl hereby seeks a declaration that claims 8, 23, andlor 33 of the '441 patent are

24
25

COUNT

VII

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '721 PATENT

26 27
28

46. 47.

Counsyl incorporates by reference the preceding averments set fofth in paragraphs 1-45.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfringement of claim 5 of the '721palent.

7

COMPLAINT FOR DECLATORY JUDGMENT / CASE NO

48. 49.
'721patent.

Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing

2 J 4
5

claim 5 of the '727 patent as defined by 35 U.S.C. 271.

Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, or sale of its

genetic sequencing and analysis of the BRCAI gene does not directly or indirectly infringe claim 5 of the

COUNT

VIII

7
8

DECLARATORY JUDGMENT OF INVAI-IDITY OF THE.'72I PATENT

9 10
11

50. 51. 52.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-49.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

claim 5 of the '72I palent. Claim 5 of the '72I patent fails to meet one or more of the statutory requirements and/or

I2
13

conditions for patentability under the patent laws of the United States, including but not limited to 35 U.S.C. $$ 101-103, patenting.

ll2,

et seq., and/or under the

judicially created doctrine of obviousness-type double

T4
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53,

Counsyl hereby seeks a declaration that claim 5 of the '727 pafent is invalid.

COUNT IX

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18

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '497 PATENT

l9
20
21

54. 55. 56.

57

Counsyl incorporates by reference the preceding averments set forth in paragraphs l-53.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfringement of at least one of claims 1-20 of the '497 patent. Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing

22
23

claims 1-20 of the '497 patent as defined by 35 U.S.C. 271.

Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, ot sale of its

24
25

genetic sequencing and analysis of the BRCAl gene does not directly or indirectly infringe claims 1-20 of

the'497 patent. COUNT X

26 27 28

DECLARATORY JUDGMENT OF INVALIDITY OF THE'497 PATENT

58.

Counsyl incorporates by reference the preceding averrnents set

8

foth in paragraphs 1-57.

COMPLAINT FOR DECLATORY JUDGME"T / CASE NO

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2
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59. 60.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

at least one of claims 1-20 of the'497 patenf.

Claims 1-20 of the '497 patent fail to meet one or more of the statutory requirements

4
5

and/or conditions for patentability under the patent laws of the United States, including but not limited to 35 U.S.C. $$ 101-103, double patenting.

lI2,

et seq., and/or under the

judicially created doctrine of obviousness-type

7
8 9 10
11

61.

Counsyl hereby seeks a declaration that claims 1-20 of the '497 patent are invalid.

COUNT XI

DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE '492 PATENT

62. 63. 64. 65.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-6i.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

t2
13

noninfringement of at least one of claims 5 and/or 9 of the '492 patenf'

Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing

l4
15

claims 5 and./or 9 of the '492 palent as defined by 35 U.S.C. 271. Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, or sale of its
5

16

genetic sequencing and analysis of the BRCA2 gene does not directly or indirectly infringe claims and/or 9 of the' 492 patent.

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18

COUNT

XII

l9
20
21

DECLARATORY JUDGMENT OF INVALIDITY OF THE'492 PATENT

66. 67. 68.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-65.

An actual controversy exists between Counsyl and Myriad with respect to the invalidify of

22
23

at least one of claims 5 and/or 9 of the '492 patent.

Claims 5 and/or 9 of the '492 patent fail to meet one or more of the statutory requirements

24
25 26

and/or conditions for patentability under the patent laws of the United States, including but not limited to
35 U.S.C. $$ 101-103,

lI2,

et seq., and/or under the

judicially created doctrine of obviousness-type

double patenting.
69

27
28

Counsyl hereby seeks a declaration that claims 5 and/or 9 of the '492 patent are invalid.

9 COMPLAINT FOR DECLATORY JUDGMENT / CASE NO

COUNT

XIII

2
J

DECLARATORY JUDGMENT OF'NONINFRINGEMENT OF TTIE '857 PATENT

4
5

70. 71. 72. 73.

'857 patent.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-69.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfngement of claim 4 of the '857 patent.

Counsyl has not directly or indirectly infringed and is not directly or indirectly in-&inging

7
8

claim 4 of the '857 patent as defined by 35 U.S.C. 271.

Counsyl hereby seeks a declaration that the manufacture, use, offer for sale, ot sale of its

genetic sequencing and analysis of the BRCA2 gene does not directly or indirectly infringe clatm 4 of the

l0
l1
T2 13

COUNT XIV

DECLARATORY JUDGMENT OF INVA.LIDITY OF THB '857 PATENT

t4
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74. 75. 76.

Counsyl incorporates by reference the preceding averments set forth in paragraphs 1-73.

An actual controversy exists between Counsyl and Myriad with respect to the invalidify of

claim 4 of the '857 patent. Claim 4 of the '857 patent fails to meet one or more of the statutory requirements and/or

t7
18 19

conditions for patentability under the patent laws of the United States, including but not limited to 35 U.S.C. $$ 101-103, patenting.

lI2,

et seq., andlor under the

judicially created doctrine of obviousness-type double

20

77.

Counsyl hereby seeks a declaration that claim 4 of the '857 patent is invalid.

2t
22 z3 24 25 26 27 28

COUNT XV

DECLARATORY JUDGMENT OF NONINFRINGEMBNT OF TI{E '379 PATENT

78. 79. 80. 81.

Counsyl incorporates by reference the preceding averments set forth in paragraphs l-77.

An actual controversy exists between Counsyl and Myriad with respect to Counsyl's

noninfringementof atleastoneof claims l-20,24,25,40 and/or41 of the'379palent.

Counsyl has not directly or indirectly infringed and is not directly or indirectly infringing
.

claims l-20,24,25, 40 and/or 41 of the '379 patenl as defined by 35 U,S.C. $ 271

Counsyl hereby seeks a declaration that the manufacture, use) offer for sale, or sale of its
10

COMPLAINT FOR DECLATORY JUDGMENT / CASE NO.

genetic sequencing and analysis of the BRCA2 gene does not directly or indirectly infringe claims 1-20,

2
J

24, 25, 40 andlor 41 of the '379 patent.

COUNT XVI

4
5

DECLARATORY JUDGMENT OF IIWALIDITY OF THE '379 PATENT

6 7
8

82. 83. 84.

Counsyl incorporates by reference the preceding aveunents set forth in paragraphs 1-81.

An actual controversy exists between Counsyl and Myriad with respect to the invalidity of

at least one of claims 1-20,

24,25,40 and/or 41 of the '379 patent.

Claims 7-20,24,25,40 and/or41 ofthe'3T9patentfailtomeetoneormoreofthe

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11

statutory requirements and/or conditions for patentability under the patent laws of the United States,

including but not limited to 35 U.S.C. $$ 101-103,112, et seq., and/or under the judicially created
do

ctrine of obviousness-type double patenting.

12
13

85.

Counsyl hereby seeks a declaration that claims 7-20, 24, 25, 40 and/or

4l of the '379

patent are invalid.

I4
15

PRAYBR FOR RELIEF

V/HEREFORE, Counsyl respectfully requests that:

t6

A.

Judgment be entered declaring that Counsyl has not infringed, induced infringement of, or

t7
18

contributed to the infringement of and is not infringing, inducing the infringement of, or contributing to
the infringement of any one of the following clairns: claim 6 of the '999 patent, claims 5, 6, of the '282 patent, clairns

I9
20

8,23,33 of the'441patent, claim 5 of the'721

patent, claims l-20

of the'497

patent,

claims 5, 9 of the '492patent claim 4 of the '857 patent, and/or claims l-20,24,25,40 and/or 41 of the '379 patent;

2t
22
23

B.
patent, claims

Judgment be entered declaring that claim 6 of the '999 patent, claims 5, 6,

of lhe '282

8,23,33 of the'441

patent, claim 5 of the '721 patent claims 1-20

of the '497 patent,

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claims 5,9 of the'492patent, claim4 of the'857patent,and/or claims l-20,24,25,40 and/or41 of the '379 palent are invalid;

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C.

Judgment be entered finding that this is an exceptional case entitling Counsyl to an award

of attorneys' fees for bringing and prosecuting this action, together with interest, and costs of the action
under 35 U.S.C. $ 285; and
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COMPLAINT FOR DECLATORY JUDGMENT / CASE NO

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J
a

D.

Such other and further relief as this Court may deem just and proper.

JURY DEMAND Plaintiff hereby requests

issues so triable.
a

trial by jury, pursuant to Federal Rule of Civil Procedure 38(b), on all

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Dated: September

20,2013
By

DURIE TANGRI LLP

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DARALYN J. DURIE MARK A. LEMLEY

Attomeys for Plaintiff COUNSYL.INC.

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13

l4
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2t
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23

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I2
COMPLAINT FOR DECLATORY ruDGMENT / CASE NO