In a series of related actions brought by Enzo Life Sciences, Chief Judge Leonard P. Stark denied all Defendants’ motion for summary judgment of invalidity of the patent-in-suit for lack of written description, but granted certain Defendants’ motion for summary judgment of invalidity of that patent for nonenablement. The patent-in-suit related to nucleic acid hybridization technology involving non-porous solid supports. E.g., Enzo Life Sciences, Inc. v. Gen-Probe Incorporated, C.A. No. 12-104-LPS (D. Del. June 28, 2018).
As to the written description motion, the Court found that genuine disputes of material fact existed that precluded summary judgment. See id. at 8, 10. But as to nonenablement, the Court concluded that the patent was invalid. Defendants argued that the specification lacked “any meaningful disclosure . . . on how to make and use the vast number of phosphate-labeled polynucleotides covered by the asserted claims.” Id. at 11 (alteration in original) (citations and quotation marks omitted). Observing that the claims were “extremely broad,” the Court agreed that the patent was nonenabling, agreeing with Defendants’ comparison to Federal Circuit authority. See id. at 14-17.
UPDATE: On August 15, 2017, Judge Stark invalidated a related patent in Enzo Life Sciences, Inc. v. Abbott Laboratories, C.A. No. 12-274-LPS (D. Del. Aug. 15, 2017). The Court explained that the related patent in Abbott was even broader than the patent in Gen-Probe that was invalidated due to nonenablement, explaining that “a specification that does not enable the narrower scope of polynucleotides claimed in the ‘180 patent cannot enable the broader scope of polynucleotides recited in the ‘405 patent.”