December 16, 2014 – A Federal Circuit panel reversed the district court’s denial of a motion for summary judgment of invalidity based on a finding of a lack of enablement and reversed the district court’s grant of judgment as a matter of law of noninfringement in the litigation Promega Corp. v. Life Technologies Corp., 2013-1011, -1029, -1376 (Fed. Cir., December 15, 2014). This was an appeal from the decision of District Court Judge Barbara B. Crabb of the U.S. District Court for the Western District of Wisconsin in Civil Action No. 10-cv-0281 relating to five patents concerning technology used in short tandem repeat (“STR”) kits that are used by law enforcement agencies for forensic identification and by clinical and research institutions for purposes such as analyzing cancer cells. Promega owns four patents outright, U.S. Patent Nos. 5,843,660, 6,221,598, 6,479,235, and 7,008,771 (collectively, “the Promega patents”), and is the exclusive licensee of U.S. Patent No. RE 37,984 (referred to as “the Tautz patent”). Circuit Judge Raymond T. Chen, writing for the panel, ruled that the four Promega patents were invalid for lack of enablement, but found that Life Technologies was liable for infringement of the Tautz patent under both 35 U.S.C. 271(a) and 35 U.S.C. 271(f)(1). Because the court reversed the district court decision, ruling that four of the five asserted patents on which the jury based its damages verdict were invalid, the panel vacated the jury’s finding of $52 million in lost profits to Promega and remanded to determine damages based on infringement of the Tautz patent only. Judge Sharon Prost dissented from the opinion on infringement, specifically with respect to the panel’s ruling on third-party inducement.
By: Frederick C. Millett