Promega Corporation v. Applied Biosystems, LLC, Life Technologies Corporation, and California Institute of Technology


Docket No. 2013-1454

PROST, MAYER, CHEN
March 10, 2014

Non-precedential (Rule 36 judgment)

Brief Summary: DC determination of invalidity affirmed (anticipated as earlier patent not filed “by another”; no 103(c) safe harbor as no evidence of “team research” presented).

Summary: The decision of the ND IL DC (No. 13-CV-2333) that the defendants’ (collectively referred to in the opinion as Life Tech) U.S. Pat. No. RE43,096 is invalid for anticipation and obviousness was affirmed by the FC panel under Fed. Cir. Rule 36. The dispute mainly turned on claims 62, 66 and 67 of the ‘096 patent. The DC opinion first concluded that Promega’s expert witness could have testified because his report “analyzes at length the prior art that Promega contends invalidates the `096 claims and describes the parts of those references that he believes an ordinarily skilled biochemist would have known to combine in order to be able to practice the disputed claims of the `096 patent.” It also pointed out that LifeTech did not quarrel with Promega’s contentions “that if only claim 62 is valid, Promega denies liability for inducing infringement by foreign customers, see 35 U.S.C. § 271(f), because that section does not cover method claims” and that “Promega’s products that do not use four sets of fluorescent tags do not infringe claim 67.” Expert testimony regarding royalty rates was also reviewed (not relevant to the decision as the patent was invalidated). And the term “specifically hybridized” was construed to mean “designed to bind to…even if that location [on DNA] is not unique”. LifeTech unsuccessfully argued that another of its patents (filed about a month before the ‘096 patent) was not prior art because the earlier patent was not filed “by another” (35 U.S.C. § 102(e)(2) (2011)) because the patents shared an inventor. However, the DC disagreed because the ‘096 patent included four additional persons (citing In re Kaplan, CCPA 1996) (in addition, LifeTech waived any argument for an earlier priority date for the ‘096 patent) and concluded two of the claims were anticipated. Regarding obviousness, the earlier patent was first found not to qualify for the 35 U.S.C. § 103(c) safe harbor (for inventions “‘entirely or wholly owned’ or assigned (or contractually obliged to be assigned) to the same entity”) as “team research” (OddzOn, FC 1997; In re Longi, FC 1985; In re Hubbell, FC 2013) because the inventorship of the earlier patent was corrected after filing to add an Applied Biosystems employee and the assignment to CalTech not completed until well after the ‘096 filing date. Accordingly, CalTech was determined not the be “the sole owner of the patented invention at the time of invention.” In addition, no evidence of a written joint research agreement was presented (35 U.S.C. § 103(c)(2)-(3)). The DC found that while “fluorescently tagged oligonucleotides” were known in the art, it was uncertain whether those could always be extended and if the skilled artisan “would have been motivated to do this.” Based in large part on expert testimony, the DC concluded that this motivation was present. It also concluded that “meager evidence” ruled out secondary considerations of nonobviousness. Claims 62 and 66 were also found to be invalid for obviousness-type double patenting in view of the earlier patent. Claim 62 and its dependents were also found invalid for lack of written description and enablement because the claims reached multiplex short terminal repeat (STR) analysis, “a different method…which hadn’t been invented in 1984” when the ‘096 patent was first filed. And the ‘096 specification patent was found to “adequately describe and enable the specifically hybridized oligonucleotides recited by claims 62 and 66”, although this did not affect the ultimate conclusion that all of the asserted claims were invalid, which was affirmed by this Rule 36 judgment.

This entry was posted in Anticipation (35 USC 102), Assignment / Ownership, Double Patenting, Obviousness. Bookmark the permalink.

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