On November 1, in the case of Enzo Biochem v. Applera (D. Conn. No. 04-00929), a jury found Applied Biosystems Incorporated (ABI) liable for directly infringing US Patent Number 5,449,767 by manufacturing and or selling reagent products used in DNA anaysis and sequencing. The jury also found ABI liable for inducing its customers to infringe the patent by selling DNA sequencing instruments and reagents. The jury found that ABI's infringement was not willful, but nonetheless awarded Enzo $48,587,500 in reasonable royalty damages.
The infringed patent claims certain chemical compounds useful as probes in DNA analysis, for example in DNA sequencing. The patent came out of research conducted in the Yale University laboratory of David Ward, and which the University exclusively licensed to Enzo. Initially, the District Court had on a motion for summary judgment ruled the patent invalid as anticipated by prior art, and indefinite based on the use of the claim language “covalently attached directly or through a linkage group that does not substantially interfere with the characteristic ability of the oligo- or polynucleotide to hybridize with a nucleic acid and does not substantially interfere with formation of the signalling moiety or detection of the detectable signal.”
However, in Enzo Biochem v. Applera, 599 F.3d 1325 (Fed. Cir. 2010) the Federal Circuit reversed, holding that with respect to anticipation Enzo had raised a genuine issue of material fact sufficient to survive a motion for summary judgment, and with respect to indefiniteness that the challenged claim language is not indefinite, and more particularly that the terms "hybridize" and “not interfering substantially” are not indefinite. This decision gained a lot of attention, with many people taking the position that the functional language used in the claim did not adequately apprise the public of the scope of these claims directed towards chemical compounds. It was thought that this case might be a good vehicle for the en banc Federal Circuit, or even the Supreme Court, to clarify the standard for satisfying the indefiniteness requirement, and perhaps raise the bar.
However, the petition for en banc rehearing and certiorari were both denied, and the case was sent back to the District Court for the jury to assess the validity and infringement of the patent. The jury found the claims not only to be infringed, but also rejected the anticipation and other validity challenges to Enzo's patent.