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A Massachusetts federal judge has denied biotechnology company Enzo Life Sciences Inc.’s motion to dismiss a case against it brought by Siemens Healthcare Diagnostics Inc. even though Siemens’ patent has expired. Siemens is challenging a patent office’s appeals board ruling that Enzo invented a DNA-related patent first. In his May 5 order in Siemens Healthcare Diagnostics Inc. v. Enzo Life Sciences Inc., Judge Dennis Saylor IV of the District of Massachusetts in Worcester denied Enzo’s motion to dismiss. Siemens’ case appeals an interference at the U.S. Patent and Trademark Office — a process that determines the first inventor of a particular technology. Interference rulings made by the PTO’s Board of Patent Appeals and Interferences can be appealed to a district court or to the U.S. Court of Appeals for the Federal Circuit. The PTO interference was between Bayer Healthcare LLC, which Siemens acquired, and Enzo. Both entities claimed the right to a test involving “nucleic acid hybridization,” a technique involving single strands of DNA or RNA molecules that interact and form hybrids with similar sequences. The PTO interference process for the two entities’ patents began in August 2006. At that time the interference was declared, Saylor’s opinion notes, “[Siemen's] patent was nearing the end of its 17-year statutory term, while Enzo’s claimed invention had been pending in the application process for over 20 years.” Siemens’ patent expired in June 2009, during the interference process. The patent appeals board ruled in February 2010 that Enzo’s patent application had priority. Siemens filed the District of Massachusetts appeal in July of last year. According to Siemens’ complaint, Enzo’s public statements claim the technology “is the basis for several significant products in clinical diagnostics.” In his ruling, Saylor rejected Enzo’s arguments that Siemens lacks standing and the appeal is moot because Siemens’ patent has expired. “Defendant is correct that the expiration of a patent extinguishes any right to exclude future uses of the invention,” Saylor wrote. “However, it does not become a mere nullity. On the contrary, an otherwise-valid-but-expired patent may still be used to enforce an inventor’s rights against acts of infringement that occurred during its normal statutory term.” Saylor further observed: “The effect of defendant’s priority of invention is that plaintiff’s patent was never valid, and plaintiff may no longer sue to protect its remaining patent rights. This clearly harms plaintiff by removing its right to enforce its patent against infringement that occurred while the patent was unexpired.” Siemens’ lead lawyer on the case, Russell Barron, a Boston intellectual property partner at Philadelphia’s Pepper Hamilton, said he didn’t have client permission to discuss the case. Siemens did not respond to a request for comment. Richard DeLucia, a partner at New York-based Kenyon & Kenyon who served as one of Enzo’s lawyers on the case declined to comment. The company did not return a call for comment. Siemens v. Enzo is interesting in light of a recent Federal Circuit decision about a related provision of the patent code, said Erik Belt, a Boston intellectual property partner at Newark, N.J.-based McCarter & English, who isn’t involved in the case. In November, a divided en banc Federal Circuit ruled in Hyatt v. Kappos that patent applicants could introduce new evidence in federal district court appeals of rulings by the patent office appeals board. The PTO is fighting that ruling with a pending certiorari petition with the U.S. Supreme Court. While Hyatt v. Kappos is about a district court appeal of the PTO’s denial of a patent application and Siemens v. Enzo is the appeal of an interference decision, the rules governing both procedures are often thought of as sister provisions and they are treated similarly, Belt said. “The Hyatt case could have implications for the interference that Judge Saylor will be deciding,” Belt said. The PTO’s cert. petition creates uncertainty about how district court appeals of PTO appeals board rulings will ultimately be conducted, but Belt favors allowing parties to go beyond the PTO record in the district court case. “I’m a big believer in the jury system,” Belt said. “The counter argument would be that you’ve already had this administrative proceeding; why do it all over again?” Sheri Qualters can be contacted at [email protected].

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