Enzo Biochem, Inc. v. Calgene, Inc., Civil Action No. 93-110-JJF.
Citation | 14 F.Supp.2d 536 |
Decision Date | 01 June 1998 |
Docket Number | Civil Action No. 93-110-JJF. |
Court | U.S. District Court — District of Delaware |
Parties | ENZO BIOCHEM, INC., Plaintiff, v. CALGENE, INC., Defendant. |
Josy W. Ingersoll, John W. Shaw, of Young, Conaway, Stargatt & Taylor, Wilmington, DE, of counsel Richard L. DeLucia, Charles A. Weiss, of Kenyon & Kenyon, New York City, for Plaintiff.
Patricia Smink Rogowski, of Connolly, Bove, Lodge & Hutz, Wilmington, DE, of counsel William F. Lee, James L. Quarles III, William G. McElwain, and David B. Bassett, of Hale and Dorr, Washington, DC, for Defendant.
This is a patent case involving genetic antisense technology. Plaintiff Enzo Biochem, Inc. ("Enzo") brought this action against Defendant Calgene, Inc. ("Calgene") for infringement of two patents for which it is the exclusive licensee (D.I.363). Enzo claims that Calgene infringes United States Patent Number 5,190,931 (the "'931 Patent") and United States Patent Number 5,208,149 (the "'149 Patent") by its production of the FLAVR SAVR ® brand tomato. Enzo also seeks a declaratory judgment finding Calgene's patent, United States Patent Number 5,107,065 (the "Calgene '065 Patent") invalid and unenforceable on the grounds of misuse, anticipation and obviousness. Finally, Enzo alleges malicious prosecution by Calgene as a result of Calgene's litigation against Enzo in California. (D.I. 1 at 2, 44-46).
Defendant Calgene has counterclaimed, seeking a declaratory judgment that the '931 Patent, the '149 Patent and a third Enzo patent, United States Patent Number 5,272,065 (the "Enzo '065 Patent") are invalid, unenforceable and not infringed. (D.I. 54 at 367). Calgene contends that Enzo's patents are invalid on the grounds of non-enablement, anticipation, obviousness and inequitable conduct before the United States Patent and Trademark Office ("PTO"). Additionally, Calgene defends the validity of the Calgene '065 Patent, although it alleges that the Court has no jurisdiction to decide the issue. (D.I.367). Both parties seek an award of a attorney's fees, claiming that the case is exceptional. (D.I. 363; D.I. 369).
In the first patent infringement action filed by Enzo against Calgene, Enzo alleged infringement of its '931 Patent only. (D.Del. C.A. 93-110-JJF). In the second infringement action Enzo filed against Calgene, it alleged infringement of its '149 Patent. (D.Del.C.A.94-57-JJF). Because both actions involved similar factual and legal issues, the Court ordered the actions to be consolidated on October 7, 1994. (D.I.322).
The Court bifurcated the liability and damages issues for purposes of trial and conducted a bench trial on the issues of infringement, willful infringement, validity, enforceability, and attorney's fees in April, 1995. (D.I.464).1 Pursuant to Federal Rule of Civil Procedure 52, the Court issued an Opinion setting forth its findings of fact and conclusions of law. Shortly thereafter, the parties informed the Court of an inconsistency in its Opinion. In order to prevent confusion on appeal, the Court withdrew its Opinion.
Since withdrawing its Opinion, the Court has conducted a full review of the record and re-read the briefs submitted. As a result of this review, the Court has determined that its claim interpretation analysis omitted a discussion of the meaning of the disputed term "complementary" in Claim 1 and Claim 34 of the '931 Patent. In the instant Opinion, the Court will include a discussion of this issue in its claim interpretation analysis. This Opinion shall constitute the Court's findings of fact and conclusions of law in this case, superseding any previous findings and conclusions.
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Enzo Biochem v. Calgene
...U.S. Patents 5,190,931 and 5,208,149 are invalid and not infringed by Calgene, Inc.'s FLAVR SAVR tomato. See Enzo Biochem, Inc. v. Calgene, Inc., 14 F. Supp. 2d 536 (D. Del. 1998); Enzo Biochem, Inc. v. Calgene, Inc., Civ. Action Nos. 93-110-JJF, 94-57-JJF (D. Del. June 4, 1998) (final judg......