Federal Circuit Hands a Quick Win to DNA Tester Promega

Federal Circuit Hands a Quick Win to DNA Tester Promega Jason Doiy / The Recorder Edward Reines, Weil Gotshal & Manges partner.

For one day, in one case at least, the Federal Circuit and Judge Richard Posner are seeing eye to eye.

The U.S. Court of Appeals for the Federal Circuit on Monday summarily upheld a ruling in a DNA technology patent dispute that the Seventh Circuit jurist presided over as a trial judge. Monday’s affirmance in Promega v. Applied Biosystems came despite recent sniping between the Federal Circuit, Posner and one of his Seventh Circuit colleagues—and also overcame assertions from appellant Life Technologies Corp. that Posner had ignored the evidence and formulated his own theory of the case.

“This is the risk when you have a district judge coming up with a theory that’s not supported by an expert,” Life Technologies counsel Edward Reines of Weil, Gotshal & Manges had argued in vain to the Federal Circuit last week.

But the court has yet to rule on another case, argued the same day, before the same panel, and involving the same companies. That case, involving a $52 million infringement verdict, appeared to pose a tougher question for the court.

In that second case, U.S. District Judge Barbara Crabb of Washington threw out the verdict for Promega Corp. on post-trial motions, leaving Reines and Wilmer Cutler Pickering Hale and Dorr partner Seth Waxman to duke it out before the Federal Circuit over whether a company can “actively induce” patent infringement by its own subsidiary, among other issues.

“There is no reason to support the bright-line rule that Judge Crabb articulated that you cannot induce yourself to do something,” Waxman argued.

“We’d be the first ones to say that, though,” Judge Raymond Chen pointed out.

Wisconsin-based Promega and Life Technologies of Carlsbad, Calif., are competitors in the market for DNA testing kits used to identify criminals and determine paternity, among many other applications. The disputed patents relate to multiplex polymerase chain reaction amplification, a process for marking DNA strands at a region known as the STR locus. Crabb ruled before trial that Life Technologies had infringed, and a jury awarded the $52 million.

But Life Technologies argued that the evidence showed only one component of the kit—a polymerase—was manufactured in the United States. Crabb agreed that a single component cannot as a matter of law constitute a “substantial portion” of the product, as required by Section 271(f)(1) of the Patent Act. Some of the kits used more than one U.S.-made component, but Promega didn’t quantify sales of those products, Crabb added, so the entire award was void.

Crabb also ruled there was no evidence that Life Technologies actively induced a third party to commit infringement under Section 271(a). Promega argued that Life Technologies itself or its subsidiaries were the third parties.

At last week’s arguments, Judge Sharon Prost joked that Waxman must be “intimately familiar” with a similar inducement issue that he’ll be arguing next month to the U.S. Supreme Court in Limelight v. Akamai Networks.

“I’m getting there,” Waxman quipped. But he argued the outcome of that case won’t affect the Promega case.

Chen then asked Waxman how the inducement theory had crept into the case, which led to a complex answer from Waxman that turned on the verdict form, jury instructions and Life Technologies’ alleged withholding of discovery about a manufacturing facility in Warrington, England.

When it was his turn, Reines said the problem wasn’t discovery, it was Promega’s decision to conflate Section 271(a) and 271(f) on the verdict form. “I’ve been through a lot of trials. I’ve been through a lot of appeals,” Reines said. “I’ve never seen anything remotely resembling that. Frankenstein comes to mind, OK?”

Chen speculated that if the court sided with Promega “about the whole inducing yourself theory,” then the case might be remanded for evidence about kits with multiple U.S. components. “That could satisfy the ‘substantial’ portion of the components element of Section 271(f)(1), even if we were to say that you have to have more than one component.”

Reines also argued that Promega’s patents are too open-ended, because Promega claimed the ability to match DNA strands at unlimited numbers of locations without showing they could be marked using Promega’s technology. That seemed to get some traction with Chen.

“If the court construes this claim to cover any and all sets of loci,” he asked Waxman, “then do you agree there’s an enablement problem?”

Contact the reporter at sgraham@alm.com.

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