“Some” Enablement Isn’t Enough for PacBio

| Karen Cassidy Selvaggio


Before Lourie, Taranto, and Stoll. Appeal from the United States District Court for the District of Delaware.

Summary: Enablement is required for the full scope of the claimed invention.

Pacific Biosciences of California (“PacBio”) sued Oxford Nanopore Technologies, Inc. and Oxford Nanopore Technologies, Ltd. (collectively, “Oxford”) for infringement of several patents owned by PacBio. A jury found all asserted claims infringed, but invalid for lack of enablement. The district court denied both PacBio’s motion for judgment as a matter of law (JMOL) on enablement and its motion for new trial based on the jury’s lack of enablement verdict and Oxford’s improper remarks during its opening.

On appeal, the Federal Circuit rejected PacBio’s arguments, explaining that it is not enough for enablement that before the priority date of the patents at issue, relevant artisans knew how to perform some “nanopore sequencing.” To the contrary, what matters is the scope of the asserted claims, which in this case were directed to a broad range of nucleic acids. PacBio’s appeal relied extensively on testimony from Oxford’s expert admitting that the claims were enabled when he testified that a skilled artisan would have been able to successfully perform the claimed method. However, the Federal Circuit rejected this argument finding that the jury, when considering the statement in the context of the expert’s full testimony, need not give an isolated statement the broad meaning that PacBio does. The Federal Circuit also highlighted the lack of evidence of reduction to practice by PacBio and testimony that PacBio had never performed the claimed methods. The Federal Circuit then concluded that there was ample evidence to support a finding that before the priority date, relevant artisans did not know how to perform nanopore sequencing for more than a narrow range of the full scope of nucleic acids covered by the asserted claims, and affirmed the district court’s denial of PacBio’s JMOL motion.

The Federal Circuit also affirmed the district court’s denial of PacBio’s motion for new trial. PacBio mainly argued that a new trial is necessary based on Oxford’s extended mentions of previous litigations between the parties, PacBio’s previous efforts to exclude Oxford’s products from the market, and the potential applications of the accused products to the then-emerging COVID-19 crisis. The Federal Circuit noted that PacBio itself mentioned the possible connection between COVID-19 and the technology at issue, that PacBio did not object in advance despite knowing Oxford would mention COVID-19 in its opening, that the district court gave exactly the curative instruction that PacBio requested, and that the Court implemented a procedural safeguard for the remainder of trial to prevent evidence from reaching the jury that it deemed prejudicial. Given these circumstances, the Federal Circuit determined there was no basis for disturbing the district court’s determination that there was insufficient likelihood that the improper remarks had an adverse impact on the verdict and affirmed the district court’s denial of the motion for new trial.

Editor: Paul Stewart