Promega hoisted on its own petard by the CAFC

Lack of enablement doomed the claims, and statements during prosecution were part of the problem in the case
Promega v. Lifetech:


For the reasons discussed herein, we conclude
that the asserted claims of the Promega patents
are invalid for lack of enablement.



Of interest:


Promega pressed the same
position when defending
the validity of the Promega patents in
this action.

In particular, Promega argued that
the loci multiplexes recited in its claims
were new inventions even though
they “comprised” prior art loci combinations
that are subsets of its claimed STR loci.

Promega justified its
position by repeatedly
describing the identification of new
successfully co-amplifying
STR loci combinations as
“unpredictable.”

(...)
But when describing
the scope of its claims for pur-
poses of infringement, Promega
sings a different tune.