Innogenetics Loses Injunction; Abbott HCV Genotyping Test to Remain on the Market
By Robert Dailey --
The Federal Circuit today released its opinion in the ongoing dispute between Abbott and Innogenetics over diagnostic tools for classifying hepatitis C virus (HCV) genotypes. Patent Docs previously reported on the District Court order and its issuance of an injunction.
Innogenetics owns U.S. Patent No. 5,846,704 directed to methods of genotyping HCV. Claim 1 recites:
A method of genotyping HCV present in a biological sample comprising hybridizing nucleic acids in a biological sample with at least one probe and detecting a complex as formed with said probe and said nucleic acids of HCV, using a probe that specifically hybridizes to the domain extending from the nucleotides at positions -291 to -66 of the 5' untranslated region of the HCV.
Abbott argued that its product could not infringe the claim because its product constitutes after-arising technology (i.e., it relies on developments that did not exist as of the '704 patent's priority date). Therefore, the Federal Circuit could have used this case as an opportunity to refine the differences between two 2004 cases: SuperGuide Corp. v. DirectTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004) (holding that after-arising technology may infringe) and Chiron Corp. v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004) (holding that claims that sweep in after-arising technology fail the written description requirement). In the end, this didn't happen. The Federal Circuit agreed with the District Court in finding that Abbott never properly raised the issue at trial.
The Federal Circuit affirmed the District Court's findings on patent validity and enforceability with one exception. An Abbott expert had testified that a prior art patent, U.S. Patent No. 5,580,718 anticipated claim 1 of the '704 patent. The District Court had rejected his testimony because the lower court assessed that the testimony was premised on a misunderstanding of its claim construction. The Federal Circuit held that the expert's testimony was consistent with the claim construction, and asked the District Court to reconsider whether the '718 patent anticipates the Innogenetics patent. The Federal Circuit resisted weighing in on the merits of this anticipation issue until the District Court can hold a new trial.
The Federal Circuit also dissolved the permanent injunction that the District Court had issued following the trial. The District Court's damage award of $7 million had included $5.8 million market entry fee as well as an ongoing royalty of 5-10 euro per test. The Federal Circuit held that Innogenetics could not collect a market entry fee and an ongoing royalty, and simultaneously benefit from a permanent injunction. In general, the willingness of a patentee to accept royalty payments does not preclude issuance of a permanent injunction. But the situation is different when the patentee also accepts damages covering market entry fees and ongoing royalty payments.
Hence, the case is headed back to the District Court in Madison, Wisconsin, for a mini-trial on the issue of whether the '718 patent anticipates the Innogenetics patent. But now that the injunction has been dissolved, the two parties may be much closer to settling their dispute.
Innogenetics, N.V. v. Abbott Labs. (Fed. Cir. 2008)
Panel: Circuit Judge Bryson, Senior Circuit Judge Clevenger, and Circuit Judge Moore
Opinion by Circuit Judge MooreFor additional information regarding this topic, please see:
- "Innogenetics Appeals Its Win over Abbott," January 30, 2007
- "Permanent Injunction Issued against Abbott HCV Genotyping Test Kit," January 12, 2007
- "Innogenetics Wins $7 Million Judgment against Abbott for Infringing HCV Genotyping Method," January 8, 2007
Additional information regarding this case can also be found at Patently-O.
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