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Enzo Attorney Disputes Claim That Markman Hearing Ruling Will Benefit Defendants' Case

An attorney representing Enzo Biochem in its separate patent-infringement lawsuits against seven life-science rivals disagreed this week with news reports that suggested that the defendants had won a Markman ruling last month.
The counsel, Scott Bornstein, said the litigation is “more than just a simple garden-variety patent case,” and Enzo has some “very unusual and very strong contract claims against the defendants.” Enzo is suing GE Healthcare, Affymetrix, PerkinElmer, Sigma Aldrich, Orchid Biosciences (now called Orchid Cellmark), Molecular Probes, and Roche for allegedly infringing eight patents.
Additionally Bornstein, of the New York-based law firm Greenberg Traurig, told BioArray News that Enzo believes the ruling, which constructs the claims in the eight patents that the defendants allegedly infringe, strengthens Enzo’s case.
Beside Enzo, at least two defendants publicly commented on the results of the July 10 Markman hearing. One of these was Roche, which in a July 20 statement said the US District Court judge presiding over the case had ruled “in favor of Roche Diagnostics on important aspects of patent infringement allegations brought by Enzo Biochem. …” (see BAN 7/25/2006).
However several news organizations covered Roche’s statement by reporting that the Swiss company had claimed it “won” the hearing. “Roche says wins patent dispute with Enzo Biochem,” read a July 21 headline from AFX News Limited on At the same time, Enzo had released a statement saying the ruling was in its favor.
The second defendant to comment on the ruling was Affymetrix, whose CEO Steve Fodor said during a second-quarter conference call last month that the “court adopted the key interpretations proposed by Affymetrix and six codefendants relating to eight patents covered by the order.”
“We are pleased with the decision and look forward to the successful conclusion of this litigation,” Fodor said.
But to Enzo’s attorney “a Markman ruling, in and of itself, nobody wins. You cannot win a case or lose a case by a Markman ruling,” Bornstein said. “All it does is it positions a case to go forward so that you can present your case to a jury one day.”
“From Enzo’s perspective, we wanted to get the Markman concluded,” he added. “We obviously had claim terms that were entitled to certain construction, the defendants had claim terms they believe should be constructed differently.”

“The defendants will try to do everything they can to avoid a trial, our goal is to get there as quickly as possible.”

In Bornstein’s opinion, the sooner Enzo can get the defendants to trial, the better it is for the company. He said that the judge had not set a trial date in any of the seven patent cases, but that he hoped that Enzo will be able to get trial dates by next summer.
Enzo sued the seven companies in 2002 and 2003, and it is not guaranteed that the case will ever see the inside of a courtroom.
Roche has publicly stated that it intends to ask the judge for summary judgment in the case to avoid a jury trial and end the dispute with Enzo.
The Markman ruling “will allow us to request a further ruling from the Court, declaring that Roche does not infringe on this patent," Melinda Griffith, senior vice president and general counsel of Roche Molecular Diagnostics, said in a July statement. "We look forward to the successful conclusion of this litigation."
However, Bornstein said that a trial is in Enzo’s best interest.
“The defendants will try to do everything they can to avoid a trial; our goal is to get there as quickly as possible,” he said.
“Five of the seven defendants, including Roche and Affymetrix, entered into contracts well before the lawsuits were filed. In those contracts, they either explicitly or implicitly acknowledged that these products that we are all fighting about today are covered by their patents. So they have already acknowledged in a contract that they infringe,” Bornstein said.
Roche could not be reached for comment. Affymetrix declined to comment on Bornstein's statements.
If the case does go to trial, Bornstein said that the result could have ramifications throughout the microarray industry. “What you have here is pioneering inventions in the area of labeling, hybridization, and detection of nucleic acids. It really has a very broad reach in the industry,” Bornstein said.

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