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US Gov't Opens Inquiry Into Whether Enzo's Sequencing Patent Predates IP Used by ABI

NEW YORK (GenomeWeb News) — Enzo Biochem today said the US Patent and Trademark Office believes that a patent application it filed 24 years ago interferes with a patent covering genome sequencing technology that is owned by the California Institute of Technology and licensed exclusively to Applied Biosystems.
The USPTO has named Enzo the senior party in the dispute over the technology, which is central to ABI’s sequencing instruments. Enzo claims it filed its patent in 1982.
If Enzo wins the dispute it could mean a financial windfall for the small company, and it could spell trouble for ABI, whose sequencers generate nearly 30 percent of its annual revenue. Revenue generated by ABI's sequencing business fell to $137.8 million in fiscal 2006, which ended June 30, from $143.5 million in fiscal 2005.
A patent interference is a Board of Patent Appeals proceeding that takes place when "a patent and an allowed patent claim essentially the same invention." The process aims to determine "which party is the first inventor and which party owns the patent rights to the invention."
Enzo said its lawyers deem the proceedings significant because they will "decide who owns the rights to DNA gel sequencing."
An ABI spokesperson declined to comment. A spokesperson for Caltech did not comment because the school has not yet received supporting documents.
Enzo's Suit Against ABI
Last month, Enzo said it has won an important stage in a suit it filed against ABI for allegedly infringing six patents it claims relate to methods and materials for detecting nucleic acid sequences.
In the suit, currently pending in the US District Court for the District of Connecticut, New Haven Division, 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 the patents.
A Markman ruling convened by that court earlier this year to define the interpretations of the disputed patents "adopted substantially all of Enzo's constructions of key patent claim terms," the company said.
However, since the Connecticut court’s interpretation of five of the disputed claims conflicts with the construction of the same patents issued during the summer by a New York court, the Connecticut court certified the ruling for immediate appeal to the Federal Circuit, according to court documents.

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