Oxford Nanopore secures Fed Circ victory in PacBio DNA suit
The US Court of Appeals for the Federal Circuit has upheld a district court jury decision that found Pacific Biosciences’ DNA sequencing patents—which it had asserted against Oxford Nanopore Technologies—were invalid.
Pacific Biosciences had sued Oxford, accusing it of infringing several patents, including US Patent numbers 9,546,400 and 9,772,323.
A District Court for the District of Delaware jury concluded that all asserted claims infringed, but also determined that the claims were invalid for lack of enablement. It also denied Pacific’s request that the court grant a new trial due to Oxford’s improper remarks related to COVID-19 during the opening of the court hearing.
Circuit Judges Alan Louri, Richard Taranto and Kara Stoll affirmed the ruling in a judgment released Tuesday, denying Pacific Biosciences motion for a new trial and invalidating its asserted patents.
“In sum, we see an inadequate basis here to substitute our judgment about prejudice for the judgment of the district court,” the judgment read.
Improper remarks
PacBio’s argument for a new trial was based around “improper remarks” related to COVID-19 that Oxford had made in its opening statement at the district court.
Before trial, the district court had granted Pacific Biosciences a motion in limine (MIL) from using ‘pejorative terms’ in the proceedings, including “non-practicing entity,” “NPE,” and “paper patents”.
A trial began in March 2020, among mounting concerns of COVID-19. PacBio mentioned coronavirus in passing in the trial opening, but Oxford discussed it “much more extensively”, talking about “infectious disease monitoring” and providing an anecdote about sending products to Wuhan at the outset of the coronavirus outbreak.
Oxford made those remarks as part of its references to PacBio “seeking to exclude Oxford’s products” and referencing previous litigation between the parties on other patents, the Federal Circuit judgment claims.
Pacific Biosciences claimed that these opening remarks violated the MIL order and that the references to COVID-19 were part of the violation, but did not immediately seek a new trial.
“Given all the circumstances, we do not see a basis for disturbing the district court’s assessment that there was an insufficient likelihood that the improper opening remarks had an adverse impact on the ultimate verdict to justify a new trial in this case,” Judge Taranto wrote.
Case history
PacBio first sued Oxford in the US District Court for the District of Delaware in 2017.
The case was referred to the jury on March 17, 2020, which returned a verdict on March 18 finding all asserted claims infringed but also determined the claims invalid due to lack of enablement.
The district court entered judgment for Oxford based on the jury’s verdict on March 31, 2020.
After trial, PacBio renewed its motion for judgment as a matter of law and moved for a new trial arguing that the jury’s verdict was unsupported and that Oxford’s COVID statements were “so prejudicial” that the case should be retried.
The court rejected both arguments, entering a final judgment on August 13, 2020, leading PacBio to appeal to the Federal Circuit.
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