Wednesday, November 13, 2013

Enzo Biochem, Inc. v. Gen-Probe Inc. case brief

Enzo Biochem, Inc. v. Gen-Probe Inc. case brief summary
296 F.3d 1316 (2002)

Plaintiff patent assignee petitioned for rehearing following the denial of relief on its appeal from the judgment of the United States District Court for the Southern District of New York, granting summary judgment to defendant alleged infringers in the patent assignee's patent infringement action.

The patent assignee claimed that it raised factual issues regarding whether the reference in the specification to the deposits of biological materials in a public depository inherently disclosed that the inventors were in possession of the claimed nucleotide sequences, and that its patent claims per se met the written description requirement under 35 U.S.C.S. § 112, P 1 because they appeared in ipsis verbis in the written description.


  • The court held that the patent assignee's reference in its specification to its deposit in a public depository was sufficient to constitute an adequate description of the deposited material under the written description requirement of 35 U.S.C.S. § 112, P 1. 
  • The court found that the patent assignee raised factual issues as to whether a reasonable fact-finder could conclude that the claimed sequences were described by their ability to hybridize to structures that, while not explicitly sequenced, were accessible to the public, and as to whether it had demonstrated the requisite possession of the claimed nucleotide sequences.
The petition was granted. The judgment was reversed, and the action was remanded.

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