Despite the Supreme Court’s recent Teva v. Sandoz decision that factual findings by a district court during claim construction are entitled to deference, a three-member panel of the Federal Circuit reversed the district court’s claim construction and vacated the judgment of infringement against Applera Corp. (Applera) upon finding that the district court erred in its claim construction. Plaintiff Enzo Biochem Corp. (Enzo) filed a complaint in the District of Connecticut alleging that Applera infringed its patent directed to nucleotide probes. The court conducted a claim construction hearing, and subsequently, a jury found that Applera infringed the claims of the asserted patent. Applera filed an appeal asserting that the district court erred in its claim construction.
The district court construed the disputed phrase to cover both direct detection (i.e., chemical moiety “A” comprises the entirety of the signaling moiety) and indirect detection (i.e., “A” is a component of the signaling moiety). First, the Federal Circuit found that this construction was inconsistent with the plain language of the claims because it impermissibly broadened the scope of the claim to include a single-component signaling moiety (i.e., direct detection), and read out a claim requirement that “A” does not interfere with formation of the signaling moiety. Moreover, the specification provided additional support that the claim was limited to indirect detection. Therefore, the Federal Circuit concluded that the district court erred by construing the patent claim to cover both direct and indirect detection and remanded to the district court to determine infringement in light of the new construction. In a dissenting opinion, Justice Newman disagrees with the majority’s construction and asserts that the majority failed to show error of fact or law in the district court’s findings and conclusions.
Enzo Biochem Inc., v. Applera Corp., No. 2014-1321 (Fed. Cir. Mar. 16, 2015).