Federal Circuit throws out Yale’s damages in DNA suit

The US Court of Appeals for the Federal Circuit yesterday threw out a damages sum of $48 million, some of which had been awarded to Yale University, finding that a lower court did not properly interpret the claims in the disputed patent.

The case centred on a patent claiming a method for sequencing DNA. US patent 5,449,767, titled “Modified polynucleotides and methods of preparing same”, is owned by Yale University, which with Enzo Biochem brought a case of patent infringement against biotechnology companies Applera and Tropix.

Applera is now known as Applied Biosystems, which is part of Life Technologies, a Thermo Fisher Scientific brand.

In November 2012 the US District Court for the District of Connecticut found that Applera and Tropix were liable for damages for directly infringing all five of the asserted claims in the patent, and that they had induced its customers to infringe the claims.

The court awarded Yale and Enzo more than $48 million in damages.

Applera and Tropix appealed against the decision to the Federal Circuit, arguing that the district court had erred in its interpretation of the ‘767 patent.

The Federal Circuit agreed with Applera and Tropix, reversing the district court’s claim construction, vacating the judgment of infringement, and remanding the case for further review.

Enzo said in a statement yesterday that it disagrees with the decision, and that it will request a re-hearing. “Enzo believes re-hearing is warranted by the panel’s failure to give appropriate weight to fact findings, including facts found by the jury, consistent with a broader construction of the patent.”

A spokesperson for Thermo Fisher declined to comment.