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Connecticut Court's Markman Ruling Contradicts Earlier NY Court Interpretation in Enzo, ABI Case

A US District Court in Connecticut last week ruled in Enzo Biochem’s favor in the claims-construction phase of an ongoing patent-infringement suit against Applera's Applied Biosystems group and its Tropix subsidiary.
The Markman ruling by the judge for the US District Court for the District of Connecticut, New Haven Division, contradicts interpretations made by a US District Court in New York this summer in a separate but related case.
Recognizing the difference in opinion, the judge in Connecticut certified the ruling for an expedited appeal, though it is unknown whether either party will pursue such an appeal.
In the Connecticut case, Enzo claims that a number of ABI's DNA sequencing products and systems — including its TaqMan genotyping and gene-expression arrays and Expression Array System — infringe certain of its patents.
In the Markman ruling, which sought to define the interpretations of the disputed patents, the Connecticut court "adopted substantially all of Enzo's constructions of key patent claim terms," Enzo said in a statement. Indeed, a review of the ruling supports Enzo’s claim, with the judge siding with the plaintiff for nearly all of the disputed claims in the case.
The six patents at the center of the case are US Patent Nos. 5,328,824; 5,449,767; 5,476,928; 4,711,955; 5,082,830; and 4,994,373, which relate to methods and materials for detecting nucleic acid sequences.
Certain claims in all of these patents, except for the ‘830 patent, have also been disputed in a separate suit filed in New York by Enzo against several other molecular biology tool vendors including Amersham (now part of GE Healthcare), Molecular Probes (now part of Invitrogen), PerkinElmer, Orchid Biosciences, Sigma-Aldrich, Affymetrix, and Roche Diagnostics. Thus far, Sigma-Aldrich is the only one of these defendants to settle with Enzo (see BioCommerce Week 9/20/2006).
Conflicting Constructions
In a separate Markman ruling handed down this summer, Judge John Sprizzo of the US District Court in the Southern District of New York ruled that Enzo could proceed with its litigation against the seven firms (see BioCommerce Week 7/26/2006). However, he rejected many of Enzo’s interpretations of claims in the eight patents, leading both Enzo and at least two of its opponents to say that the court backed their interpretations.
Enzo issued a statement at the time arguing that “the ruling supports Enzo’s position that hundreds of defendants’ products infringe certain Enzo patents” and “opens the door for Enzo to not only pursue its patent infringement claims, but, as importantly, to also aggressively pursue its claims that defendants breached their contractual obligations to Enzo.”  
A person familiar with Enzo’s position said after the New York Markman ruling that, although the court constructed many of the claims in a manner that could be seen as favorable to Enzo’s opponents, Enzo sees the ruling as positive to itself. The source, who wished to remain anonymous because he didn’t want to publicly comment on ongoing litigation, said this is particularly the case because the ruling left mostly intact a key patent in the suit, US Patent No. 4,994,373, entitled “Method and structures employing chemically-labeled polynucleotide probes.”
Though most of the defendants have declined to comment on the case, PerkinElmer and Roche both disputed the assertion that the court’s ruling could be construed as favorable to Enzo.
The Connecticut court’s interpretation of five of the disputed claims conflicts with the construction of the same patents by Judge Sprizzo. As a result, the Connecticut court certified its ruling for immediate appeal to the Federal Circuit, according to court documents. But it is unclear what effect, if any, the Connecticut Markman ruling will have on the New York case.
Either Enzo or Applera can ask for a quick appeal of the Markman ruling, an Enzo spokesman told BioCommerce Week. He declined to say whether Enzo would pursue this option, and Applera officials did not return a call seeking comment.
“It might be in Enzo’s best interest to [appeal the ruling] as well” as Applera, said the Enzo spokesman.
The Enzo spokesman declined to say whether the firm is engaged in settlement talks with any of the defendants in the two suits. “Obviously, we’d like to get the matter resolved in the most expeditious way,” he said.

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