Enzo Biochem Inc. v. Applera Corp.
702 F. App'x 971
| Fed. Cir. | 2017Background
- The dispute concerns infringement of U.S. Patent No. 5,449,767, which claims oligo-/polynucleotides having a covalently attached signaling moiety (non-radioactive indirect detection labels such as biotin/avidin systems) as an alternative to radioactive direct labels.
- Enzo asserted claims 1, 8, 67, 68, and 70 at trial; a jury found infringement and awarded $48.6 million. Applera appealed claim construction and invalidity issues.
- In Enzo II, the Federal Circuit held the asserted claims are limited to indirect detection (not direct detection) and remanded for infringement under that construction.
- On remand the district court (and now this panel) held Enzo did not show infringement of claims 67–70 under the proper construction and rejected Enzo’s doctrine of equivalents (DOE) theory for claims 1 and 8.
- The Federal Circuit affirmed, finding Enzo II’s claim construction applied to the asserted dependent claims and that DOE cannot capture subject matter (direct detection) explicitly excluded from the claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of Enzo II as to claims 67, 68, 70 | Enzo: Enzo II addressed only claim 1; claims 67–70 still cover direct and indirect detection | Applera: Enzo II interpreted the disputed claims (including 67–70) as limited to indirect detection | Court: Enzo II applied to all disputed asserted claims; claims 67–70 limited to indirect detection; affirmed noninfringement |
| Doctrine of equivalents for claims 1 & 8 | Enzo: Even if not literal, Applera’s direct-detection products are equivalent to Enzo’s claimed indirect-detection elements (function/way/result) | Applera: DOE cannot cover direct detection because direct detection is expressly excluded by the claims and specification; such equivalence would vitiate the claim limitation | Court: DOE rejected—equivalency cannot encompass structures/methods specifically excluded by the claims; no reasonable jury could find equivalence here |
Key Cases Cited
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (doctrine of equivalents framework; function-way-result and limits)
- Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (foundation for equivalence analysis)
- Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (every limitation and its equivalent must be present)
- Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394 (equivalence cannot embrace structures specifically excluded by claims)
- Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (doctrine of equivalents cannot render a claim limitation ineffective)
- American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318 (DOE fails where it would vitiate claim language)
- Enzo Biochem, Inc. v. Applera Corp. (Enzo II), 780 F.3d 1149 (Fed. Cir.) (previous appeal holding asserted claims limited to indirect detection)
- Enzo Biochem, Inc. v. Applera Corp. (Enzo I), 599 F.3d 1325 (Fed. Cir.) (earlier related decision)