22 August 2017Americas

Abbott sees off Enzo lawsuit after highlighting claim errors

Abbott Laboratories has fended off patent infringement claims filed by Enzo Biochem after convincing a US court that the patents did not describe the invention in a sufficient way.

Enzo had sued Abbott at the US District Court for the District of Delaware in 2012 accusing it of infringing two of its patents directed to DNA testing.

Enzo claimed its patents, US numbers 8,097,405 and 6,992,180, were infringed through various Abbot inventions including the RealTime and FISH diagnostic products.

New York-based Enzo sought damages and a permanent injunction against Abbott. Enzo has accused other companies, including pharmaceutical company Roche, of infringing the same patents.

After being hit with the complaint, Abbott filed a motion for a summary judgment claiming a lack of written description and non-enablement.

For a patent to meet enablement requirements an application must describe the invention in a manner that would enable a person with ordinary skill in the art (POSA) to make and use the invention without undue experimentation.

Abbott claimed that the ‘405 and ‘180 patents had a lack of disclosure in the specification and that a POSA would be required to engage in “undue experimentation” to identify and determine whether the claimed processes would work.

“Abbott correctly asserts that a POSA ‘would have no choice but to make and test a vast number of possible variants to the claimed invention’ … Undue experimentation would be required, rendering the claims non-enabled,” Judge Leonard Stark wrote in the order on August 15.

According to international law firm Kirkland & Ellis, which represented Abbott, the win was significant as other defendants facing similar claims had settled with Enzo for amounts ranging from $7 million (£5.4 million) to $35 million.

In May last year Thermo Fisher Scientific agreed to pay Enzo $35 million for infringing the ‘180 patent and one other.

Kirkland & Ellis claimed Abbott is the only company to date to defeat Enzo in a case relating to the patents and that other defendants are still facing claims.

Enzo, which was represented by Desmarais, said in a statement that it disagreed with the court’s decision and is exploring options for its review.

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