NEW YORK (GenomeWeb) – A federal appeals court today reversed in part an earlier decision that found Life Technologies guilty of infringing a patent held by Enzo Biochem, and remanded in part the case back to US district court.
The US Court of Appeals for the Federal Circuit found in a 2-1 decision that the US District Court for the District of Connecticut had erred when it found that Life Tech had infringed US Patent number 5,449,767. Specifically, the district court "erred in construing the disputed claims of the patent-in-suit to cover both direct and indirect detection," the appeals court wrote in its decision. As a result, it reversed the district court's decision, vacated its finding of infringement, and remanded the case back to the district court to "determine, consistent with the analysis" in the appeals court's opinion whether Life Tech, in fact, infringed Enzo's patent.
News of the decision resulted in a drop in Enzo's share price on Monday by as much as 23 percent. In afternoon trading on the New York Stock Exchange, its shares remained down 15 percent at $2.82.
In a statement, Enzo said it will request a rehearing by the district court. "Enzo believes [a]rehearing is warranted by [the appeals court's] failure to give appropriate weight to fact finding, including facts found by the jury, consistent with a broader construction of the patent," Enzo said.
The diagnostics firm and Yale University originally sued Life Tech's predecessor Applera and its Tropix subsidiary in 2004 alleging infringement of six patents. Yale licensed four of the patents to Enzo. Of the six patents, only the '767 patent was left standing in dispute, and in 2012, a jury found that Life Tech infringed the patent and awarded Enzo $48.6 million.
The patent, titled "Modified polynucleotides and methods of preparing same," relates to compounds that are used in DNA sequencing systems. It expired in 2004.
In January 2014, the district court awarded Enzo an additional $12.4 million in prejudgment interest in connection to the 2012 jury verdict, bringing the total award amount to Enzo to more than $61 million.
Through a spokesman, Life Tech, now part of Thermo Fisher Scientific, declined to comment on the appeals court's decision.