Tuesday, November 28, 2006

Patents In The Enzone

Enzo Biochem ("Enzo") has made a habit of befuddling the U.S. patent system. Enzo is the assignee of U.S. Patent No. 4,900,659, which claims nucleic acids that preferentially hybridize to complementary nucleotide sequences found in Neisseria gonorrhoeae, the causative agent of gonorrhea. On April 2nd, 2002, in Enzo Biochem, Inc. v. Gen-Probe Incorporated, 285 F.3d 1013("Enzo No"), the Court of Appeals for the Federal Circuit ("Federal Circuit") held that these claims lacked written description support in the patent specification despite the fact that Enzo had placed copies of the claimed nucleic acids in a biological depository approved by the U.S. Patent and Trademark Office ("USPTO"). Then, in a remarkable change of heart, the same Federal Circuit panel reversed itself on July 15th, 2002, in Enzo Biochem, Inc. v. Gen-Probe Incorporated, 2002 WL 1540813, No. 01-1230 ("Enzo Oops I Meant Yes"), this time holding that the nucleic acid deposits did satisfy the written description requirement after all.

Ever prone to upset the patent applecart, Enzo is now creating a stir at the USPTO. A mere 24 years after it first filed a patent application claiming automated DNA sequencing, Enzo has convinced the USPTO to declare an interference involving U.S. Patent No. 5,821,058 ("'058 patent"), entitled "Automated DNA Sequencing Technique". Leroy Hood was one of the inventors of the '058 patent, which has generated handsome profits for its owner, the California Institute of Technology ("CalTech"). Automated sequencing using gel electrophoresis, one of the inventions claimed by Enzo's patent application, is one of the fundamental techniques depended on by biotechnology researchers in both industry and academia. If, after the interference proceedings and appeals that will likely ensue, Enzo's patent is finally determined to have priority over the '058 patent, then Enzo can expect an extremely lucrative payday as companies and universities engaged in biotechnology are compelled to purchase licenses.

However, given the glacial rate at which interferences proceedings progress, CalTech and the biotechnology community will have plenty of time to worry because a final determination on who controls automated DNA sequencing will likely take years.


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