Lack of Actual Reduction to Practice Sinks Nucleic Acid Sequencing Patents

In Pac. Biosciences of California, Inc. v. Oxford Nanopore Techs., Inc., No. 20-2155 (Fed. Cir. May 11, 2021), the Federal Circuit affirmed the district court’s decision denying Pacific Biosciences’ motion for judgment as a matter of law and for a new trial on enablement.

Pacific Biosciences sued Oxford for patent infringement of its patents directed to methods for sequencing a nucleic acid using nanopore technology. The jury found that all of the asserted claims were infringed, but also found they were invalid for lack of enablement.  Pacific Biosciences moved for judgment as a matter of law and a new trial on enablement.  The district court denied the motion finding that the record as a whole, including the statements of Oxford’s expert, supported the jury’s verdict.

On appeal, the Federal Circuit found substantial evidence supporting non-enablement.  In reaching this conclusion, the Court noted that the first successful nanopore sequencing of biological DNA molecules did not occur until 2011 and that Pacific Biosciences had no evidence of actual reduction to practice to undermine Oxford’s evidence of non-enablement. Thus, the Court concluded that the record supported the jury’s conclusion that the disclosure of the asserted patents did not enable the full scope of the asserted claims.