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Enzo DNA Testing Patent Found Invalid in Win for Abbott

Abbott Laboratories scored a win in its long-running patent fight with Enzo Life Sciences Inc. over DNA testing when a Delaware federal judge recently ruled that claims in a patent Abbott was accused of infringing were invalid because they didn’t adequately explain how to make the invention.

The Aug. 15 decision by U.S. District Judge Leonard P. Stark follows a June ruling that found part of a second Enzo patent was also invalid for lack of enablement. In a Friday report, both sides agreed the combination of the decisions meant the end of the road for the Abbott suit in district court.

“The parties ... agree that the court should enter final judgment of invalidity of all asserted claims of the patents-in-suit,” the joint filing said.

Abbott Laboratories and Abbott Molecular Inc. were among several companies that Enzo sued in 2012 over patents related to DNA and RNA probe technologies. Some defendants reached settlements, including a unit of Thermo Fisher Scientific Inc., which agreed to pay $35 million.

“Enzo disagrees with the court’s decision, and is exploring options for review of the decision,” the company said a regulatory filing this week.

Abbott did not immediately provide a comment about the decision.

Enzo’s lawsuit against Abbott alleged various products made by the Chicago-based company infringed the patents, including its RealTime and FISH diagnostics products. An amended complaint filed in 2013 included three patents that Abbott was accused of violating.

One patent was later dropped from the suit. Then in a separate case against Gen-Probe Inc., Judge Stark ruled on June 28 that claims in another patent were invalid for a lack of enablement, which requires a patent to teach someone skilled in the field how to make and use the claimed invention.

The ruling, which Enzo has appealed to the Federal Circuit, had the effect of invalidating all the claims in that patent that were asserted against Abbott.

Ruling on the third patent this week, Judge Stark said that given the scope of the claims and the “limited disclosure” in the patent specification, “Abbott correctly asserts that a [person skilled in the art] ‘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,” the judge wrote in his decision, which was made public on Friday. The judge found the claims invalid and awarded Abbott summary judgment on the issue.

The patent-in-suit is U.S. Patent No. 8,097,405.

Enzo is represented by John M. Desmarais, Michael P. Stadnick, Justin P.D. Wilcox, Jordan N. Malz and Peter C. Magic of Desmarais LLP and by Brian E. Farnan of Farnan LLP.

Abbott is represented by James F. Hurst, Amanda Hollis, Michael A. Pearson Jr., Jason Wilcox and Ben Lasky of Kirkland & Ellis LLP and by John C. Phillips Jr. and David A. Bilson of Phillips Goldman McLaughlin & Hall PA.

The case is Enzo Life Sciences Inc. v. Abbott Laboratories et al., case number 1:12-cv-00274, in the U.S. District Court for the District of Delaware.