Fed. Circ. affirms PacBio loss on its DNA-sequencing patent claims

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A robotic DNA sample automation machine works on DNA samples in Tarrytown, New York March 24, 2015. REUTERS/Mike Segar

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  • Court OK's jury verdict that two PacBio patents were invalid
  • Rejects new trial based on allegedly prejudicial COVID remarks
  • No evidence jury verdict affected by opening statement

(Reuters) - The U.S. Court of Appeals for the Federal Circuit on Tuesday affirmed a Delaware federal jury's finding that two Pacific Biosciences of California Inc DNA-sequencing patents it accused Oxford Nanopore Technologies Inc of infringing were invalid, and rejected PacBio's argument that Oxford's opening statements about its technology's uses to fight COVID-19 biased the jury against it.

U.S. Circuit Judge Richard Taranto, writing for a three-judge panel said Chief U.S. District Judge Leonard Stark properly addressed Oxford's conduct after the opening, and that there was no indication the jury was affected by the statements.

Taranto also said there was sufficient evidence to support the jury's determination that the patents were invalid for a lack of enablement – a failure to sufficiently describe how to make and use the invention.

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Oxford attorney Michael Hawes of Baker Botts said that PacBio has asserted eight patents against Oxford in legal disputes, and that Oxford has won against all eight. Baker Botts' Stephen Hash, who also represented Oxford in Delaware, said it's been a "long fight," and that the ruling will hopefully "bring that fight to the close."

PacBio and its attorney Edward Reines of Weil, Gotshal & Manges didn't immediately respond to a request for comment.

Both Menlo Park, California-based PacBio and U.K.-based Oxford make DNA sequencing products and have been involved in disputes before the U.S. International Trade Commission and in the UK and Germany dating back to 2016.

PacBio sued Oxford in Delaware in 2017 for infringing patents related to DNA sequencing using nanopore technology.

A jury trial began on March 9, 2020 – the last live jury trial in the Delaware court in 2020 – when concerns about COVID-19 were becoming widespread. Stark told the parties not to present evidence or argue about "the potential impact of a verdict for PacBio – such as higher prices or slower medical research – as these issues are not for the jury to decide."

Oxford told PacBio the night before that it would mention its technology's relevance to COVID-19 in its opening argument, and PacBio didn't object. After the opening, PacBio objected to Oxford's "extensive" statements about, among other things, the use of its accused products to fight the coronavirus by sequencing strains of the virus.

Stark found the statements violated his order and warned both parties about "turning this really into a trial about an ongoing health crisis." He also ordered the parties to disclose any future COVID-19 references to each other before making them.

The jury found the two patents infringed but were invalid for a lack of enablement on March 18. Stark rejected PacBio's motion for a new trial based on Oxford's opening statement, finding no evidence that the jury was "inflamed" or "not careful."

PacBio argued on appeal that the jury's validity finding wasn't supported by the evidence, and that Oxford's "improper remarks" justified a new trial.

Taranto, joined by Circuit Judges Alan Lourie and Kara Stoll, agreed with Stark that the remarks weren't likely to have had an adverse effect on the jury's verdict.

Taranto noted that Stark gave "exactly the curative instruction that PacBio requested" after the opening, that Oxford never mentioned COVID-19 again, and that there was "no indication" that the jury did "anything other than what it was supposed to do."

The case is Pacific Biosciences of California Inc v. Oxford Nanopore Technologies Inc, U.S. Court of Appeals for the Federal Circuit, No. 20-2155.

For PacBio: Edward Reines of Weil, Gotshal & Manges

For Oxford: Michael Hawes of Baker Botts

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com