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

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A method of genotyping HCV present in a biological sample comprisinghybridizing nucleic acids in a biological sample with at least one probe anddetecting a complex as formed with said probe and said nucleic acids ofHCV, using a probe that specifically hybridizes to the domain extendingfrom the nucleotides at positions -291 to -66 of the 5’ untranslated regionof the HCV.’704 col.113 ll.1-7.Abbott moved for summary judgment, asserting that its kits were not infringing,that the ’704 patent was invalid, and that the ’704 patent had been procured byinequitable conduct. In its order denying Abbott’s motions, the district court construedthe claim limitation “detecting a complex as formed” to mean “detecting a complex thatis or has been formed.” The district court also construed the limitation in the preamble,“method of genotyping,” to mean “[a] method that distinguishes among types and/orsubtypes of hepatitis C virus (HCV) and classifies the HCV into a genotype or subtype.”On cross motions for summary judgment, the district court denied Abbott’s motion andgranted Innogenetics’ motion, concluding that Abbott had failed to adduce sufficientevidence to require a trial on the issue of inequitable conduct. Furthermore, the districtcourt deemed Abbott’s inequitable conduct claim “exceptional” and awarded attorney’sfees to Innogenetics.At the final pre-trial conference, the district court granted Innogenetics’ motion inlimine and excluded testimony on obviousness by Abbott’s witness, Dr. Patterson.However, the written order commemorating the conference rulings inaccurately statedthat defendant was precluded from entering any evidence of obviousness at trial.Aware of the mistake, Abbott nonetheless never moved for correction or reconsiderationof the written order, noting only that it wished to preserve an objection on the issue.Additionally, the district court precluded the following evidence related to anticipation:2007-1145, -1161 3
1) U.S. Patent No. 6,071,693 (the Cha patent) on the grounds that Abbott did notdisclose the patent as an anticipating prior art reference until the last day of discoveryand 2) any testimony beyond the actual words and content of the Cha PCT applicationfrom Dr. Cha, the inventor of the Cha patent and the Cha PCT application, on thegrounds that he had not been tendered as an expert witness and that an expert reporthad not been submitted.Because Abbott conceded that its entire noninfringement argument had beenpredicated on a construction of the claims that the court had not adopted, the districtcourt entered judgment as a matter of law of literal infringement against Abbott for literalinfringement of claims 1, 2, and 3 of the ’704 patent. The case then proceeded to abifurcated jury trial with only Abbott’s affirmative defense of anticipation tried during theliability phase. At trial, Abbott presented the international patent application for theinvention claimed in the Cha patent and the testimony of its expert, Dr. Bruce Patterson,that the Resnick patent anticipated claim 1 of the ’704 patent. However, before thecase went to the jury, the district court granted judgment as a matter of law of noanticipation by the Resnick patent based on its determination that Dr. Patterson’stestimony “rested on an inaccurate understanding of the construction of the limitation‘genotyping.’” The jury concluded that claim 1 of the ’704 patent was not anticipated. 1During the damages phase of trial, the jury awarded $7 million in damages toInnogenetics and found Abbott’s infringement to be willful.Post-trial, the district court denied Abbott’s motion for a new trial on infringementand invalidity and for judgment as a matter of law or a new trial on damages. However,1The jury did not decide the validity of claims 2 and 3, as they weredependent on claim 1.2007-1145, -1161 4
Page 1 and 2: United States Court of Appeals for
Page 3: appeal, we find no reversible error
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 20 and 21: detects and classifies the various
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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