Wednesday, August 02, 2017

Enzo, Yale lose appeal at CAFC

The outcome:

Enzo Biochem, Inc., Enzo Life Sciences, Inc., and Yale University (collectively, “Enzo”) appeal from the District of Connecticut’s entry of summary judgment in favor of Applera Corp. and Tropix, Inc. (collectively, “Applera”). See Enzo Biochem, Inc. v. Applera Corp. (District Court Decision), No. 3:04cv929 (JBA), 2016 U.S. Dist. LEXIS 20904 (D. Conn. Feb. 22, 2016). Because the district court accurately interpreted this court’s decision regarding the proper construction of the claims in U.S. Patent No. 5,449,767 (“the ’767 patent”) and correctly analyzed Enzo’s doctrine of equivalents argument, we affirm.

Lipoic acid and biotin are mentioned:

As an alternative to the use of radioactive labels, the ’767 patent explains that “a series of novel nucleotide derivatives that contain biotin, iminobiotin, lipoic acid, and other determinants attached covalently to the pyrimidine or purine ring have been synthesized.” Id. at col. 2 ll. 63–68. These nucleotide derivatives interact “specifically and uniquely with proteins such as avidin or antibodies.” Id. at col. 3 ll. 2–3. “If avidin is coupled to potentially demonstrable indicator molecules, including fluorescent dyes, . . . electron-dense reagents, . . . or enzymes capable of depositing insoluble reaction products, . . . the presence, location, or quantity of a biotin probe can be established.” Id. at col. 1 ll. 61–67.

The CAFC states that D. Conn. made a proper analysis:

We conclude that, after carefully parsing our decision, the district court correctly interpreted Enzo II. As the district court explained, Enzo II consistently refers to the “claims” at issue in that appeal, which extended beyond claim 1 to include claims 8, 67, 68, and 70. See District Court Decision, 2016 U.S. Dist. LEXIS 20904, at *14. For example, our opinion in Enzo II, after acknowledging that Enzo had asserted claims 1, 8, 67, 68, and 70, states that the district court “erred in its claim construction by finding that the claims at issue covered direct detection.” Enzo II, 780 F.3d at 1150 (emphasis added). We reiterated this statement in the conclusion, where we stated, “[t]he district court erred in construing the disputed claims of the patent-in-suit to cover both direct and indirect detection.” Id. at 1157 (emphasis added). The opinion also looks to the specification to consider whether it includes any teaching of direct detection applicable to the claims and concludes that the specification does not “support[] the inclusion of direct detection.” Id. at 1156. As noted by the district court, it would have been illogical for us to recognize the existence of five claims in the appeal and then repeatedly refer to the “claims at issue” or the “disputed claims” when referring only to claim 1 and not to claims 67, 68, and 70. See District Court Decision, 2016 U.S. Dist. LEXIS 20904, at *14.

The district court also correctly noted that our decision in Enzo II acknowledged Applera’s alternative invalidity arguments regarding lack of written description and lack of enablement, but did not address the merits of those arguments. Id. We did not need to address Applera’s alternative arguments because our analysis found that the scope of the claims at issue, including claims 67, 68, and 70, did not extend beyond indirect detection.

The doctrine of equivalents arguments failed because of exclusion:

Indeed, Enzo’s attempt to reframe its infringement case under the doctrine of equivalents runs headfirst into our decision in Enzo II. In that decision, we reviewed the claims and the specification to find that the claims covered only indirect detection. Enzo II, 780 F.3d at 1154– 55. We explained that “[t]he specification provides additional support that claim 1 covers only indirect detection.” Id. at 1155. We also stated that the specification does not “support[] the inclusion of direct detection, even when extrinsic expert testimony is considered.” Id. at 1156. And the specification’s “only discussion of direct detection . . . was exclusively in the context of discussing how indirect detection is a superior method.” Id. at 1155. Based on these facts, we were “persuaded that the inventors were claiming only indirect detection.” Id. at 1156.

Our decision in Enzo II, therefore, focused entirely on the conclusion that the asserted claims do not include direct detection in part because they excluded direct detection. Enzo’s attempt to incorporate direct detection methods now through the doctrine of equivalents fails. In Dolly, we concluded that “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.” 16 F.3d at 400. Applying this concept to that case, we noted that “[a] stable rigid frame assembled from the seat and back panels is not the equivalent of a separate stable rigid frame which the claim language specifically limits to structures exclusive of seat and back panels.” Id. Indeed, we found that the district court erred by “failing to give effect to this claim limitation in applying the doctrine of equivalents.” Id. The same principle applies in this case; the concept of equivalency cannot embrace direct detection because it is “specifically excluded from the scope of the claims,” id., as we found in Enzo II.

The CAFC referenced other cases:

See Akzo Nobel Coatings, 811 F.3d at 1342 (“Under the doctrine of equivalents, an infringement theory thus fails if it renders a claim limitation inconsequential or ineffective.”); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1338–39 (Fed. Cir. 2011) (concluding that a theory of equivalence was “legally insufficient” because it “would vitiate [the] claim limitation by rendering it meaningless” to find that “a signal from one source” was equivalent to “signals from a plurality of sources”)

**Separately, in passing

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