June 13, 2021

Volume XI, Number 164

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Lack of Actual Reduction to Practice Sinks Nucleic Acid Sequencing Patents

In Pac. Biosciences of California, Inc. v. Oxford Nanopore Techs., Inc., No. 20-2155 (Fed. Cir. May 11, 2021), the Federal Circuit affirmed the district court’s decision denying Pacific Biosciences’ motion for judgment as a matter of law and for a new trial on enablement.

Pacific Biosciences sued Oxford for patent infringement of its patents directed to methods for sequencing a nucleic acid using nanopore technology. The jury found that all of the asserted claims were infringed, but also found they were invalid for lack of enablement.  Pacific Biosciences moved for judgment as a matter of law and a new trial on enablement.  The district court denied the motion finding that the record as a whole, including the statements of Oxford’s expert, supported the jury’s verdict.

On appeal, the Federal Circuit found substantial evidence supporting non-enablement.  In reaching this conclusion, the Court noted that the first successful nanopore sequencing of biological DNA molecules did not occur until 2011 and that Pacific Biosciences had no evidence of actual reduction to practice to undermine Oxford’s evidence of non-enablement. Thus, the Court concluded that the record supported the jury’s conclusion that the disclosure of the asserted patents did not enable the full scope of the asserted claims.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 134
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About this Author

Caitlin O’Connell Intellectual Property Litigation Attorney Finnegan Law Firm
Associate

Caitlin O’Connell focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Caitlin is involved in all phases of litigation, including pre-litigation analysis, claim construction, fact discovery, expert discovery, and trial. Caitlin’s litigation experience includes drafting pleadings, preparing fact and corporate witnesses for depositions, coordinating discovery, working with experts to develop infringement and validity positions, preparing expert...

202 408 4004
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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