Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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detects and classifies the various genotypes of a virus, such as, in the case of HCV,HCV-1, HCV-2, HCV-3, HCV-4, HCV-5, and HCV-6.” Docket. No. 33 (Patterson ExpertRep. 4).The dispute over whether Dr. Patterson based his testimony on the districtcourt’s claim construction seems to turn upon his use of the words “detect” and“classify” and the district court’s use of the words “distinguish” and “classify” in itsconstruction of a “method of genotyping” as “[a] method that distinguishes among typesand/or subtypes of hepatitis C virus (HCV) and classifies the HCV into a genotype orsubtype.” Despite the difference in semantics, we discern no difference in meaningbetween the definition of genotyping used by Dr. Patterson and the one adopted by thedistrict court.The ’704 patent, by its own terms, differs from the prior art in its ability not just todetect the presence of HCV, but more importantly, to identify the types and/or subtypesof HCV that exist in a sample. The specification of the ’704 patent states:Several patent applications have addressed the problem of detecting thepresence of HCV . . . . Furthermore, the 5’ UR of HCV isolates has beenproven to be a good candidate for designing probes and primers forgeneral HCV detection . . . . However, none of these patent applicationspresents a method of identifying the type and/or subtype of HCV presentin the sample to be analyzed. . . . Consequently, the aim of the presentinvention is to provide a method for the rapid and indisputabledetermination of the presence of one or several genotypes of HCV presentin a biological sample and indisputably classifying the determinedisolate(s).’704 Patent col.2 ll.7-43 (emphasis added). As disclosed, the method of genotyping inthe ’704 patent requires more than simply determining whether HCV is present (i.e.,detecting HCV) in a sample. It requires detecting HCV, and then distinguishing amongone or more of the types and/or subtypes of HCV and being able to classify the types2007-1145, -1161 19
and/or subtypes found. Certainly, one of the preferred embodiments of the ’704 patentis capable of distinguishing among all six presently known types of HCV using multipleprobes. ’704 Patent col.10 ll.5-10.To the extent, however, that <strong>Innogenetics</strong> argues that a “method of genotyping”requires identifying both the presence and the absence of types in a sample andthereby distinguishing among all six types of HCV, it is in error. (Oral Arg. Tr. 28:03-28:33, Oct. 1, 2007) (“[I]t’s the ability to exclude . . . it’s the ability to say I know what Ihave and I know what I don’t have . . . you may or may not be able to say that you don’thave something else that is in the contaminated sample . . . you might be able to say Igot type A and type B, but you can’t say a negative, that I don’t have type 1-C or type 1-D . . . .”). Claim 1 is not so narrow as to require a method capable of identifying everypossible genotype of HCV present and absent in a sample. In fact, claim 1 states thatthe claimed “method of genotyping” may be performed with “at least one probe.” Thiscontemplates infringement by a method that uses a single probe to detect and classifythe presence of a single type of HCV. A single probe would not be capable ofidentifying what genotypes are present along with what genotypes are not present in asample (a single probe could not distinguish and classify all six types). In short, the“method of genotyping” in claim 1 covers a method capable of detecting and classifyingat least one particular type of HCV without necessarily identifying the absence of allother types. This is the only definition consistent with the language of the claim itselfand is supported by the written description.In this respect, Dr. Patterson’s expert report and trial testimony are bothconsistent with the construction of “method of genotyping.” In his expert report, Dr.2007-1145, -1161 20
Page 1 and 2: United States Court of Appeals for
Page 3 and 4: appeal, we find no reversible error
Page 5 and 6: 1) U.S. Patent No. 6,071,693 (the C
Page 7 and 8: the complex has been destroyed, and
Page 10 and 11: proposed jury instruction, rather t
Page 12 and 13: granted Innogenetics’ motion in l
Page 14 and 15: On appeal, Abbott argues in a singl
Page 16 and 17: permitted to adduce evidence on obv
Page 18 and 19: Abbott did not disclose the Cha pat
Page 22 and 23: Patterson stated that the Resnick p
Page 24 and 25: ’342 application were not novel i
Page 26 and 27: At the damages phase of trial, the
Page 28 and 29: Abbott could sell its product throu

Innogenetics, N.V. v. Abbott Laboratories - WilmerHale

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