With hundreds of millions of dollars at stake in revolutionary technology involving genetic engineering, Finnegan prevails for Eli Lilly
Finnegan represented Eli Lilly in a landmark case brought by The Regents of University of California (UC). Two patents were at stake and both involved recombinant human insulin. UC claimed that its patents directed to DNA sequences that encode human proinsulin (a precursor to human insulin) covered Lilly's recombinant human insulin product. They argued that Lilly owed them hundreds of millions of dollars for infringing two of its patents. Finnegan succeeded in establishing that one patent was not valid and that the other patent was not infringed. On appeal, the Federal Circuit held that that the claims of the ‘525 patent, which purported to encompass human DNA, were invalid for failing to satisfy the written description of 35 U.S.C. § 112. Concerning UC's '740 patent, the Federal Circuit found that UC specifically surrendered coverage of DNA sequences during patent prosecution of the exact sort utilized by Lilly to produce its human insulin product. Therefore, the Federal Circuit held that UC could not recapture such subject matter in an infringement action.