Announcement

Milbank Wins Big Victory for Invitrogen at the Federal Circuit

November 21, 2005 – In its fourth win at the Court of Appeals for the Federal Circuit in the past year, Milbank's IP group scored a huge victory for client Invitrogen Corporation on Friday, November 18, 2005. The U.S. District Court in Maryland had issued a summary judgment invalidating Invitrogen's three patents for genetically engineered reverse transcriptase enzyme–a critical scientific tool used for cloning DNA in laboratories worldwide–because the court believed a researcher from Columbia University made the invention before Invitrogen had. The district court did, however, also rule on summary judgment that if the patents were valid, at least one of them was infringed by the defendant Clontech Laboratories, and also that the patents were not invalid on the basis of other defenses Clontech had raised under the patent law's enablement and written description requirements. On appeal, the Federal Circuit reversed the summary judgment of invalidity on the basis of the Columbia work, holding that the district court had misapplied the legal doctrine of conception and ignored genuine material issues of fact. The Federal Circuit did, however, deny Clontech's cross-appeal and thus affirmed the district court's judgment on the other issues. The case therefore returns to the district court for a trial on validity with the backdrop of Clontech having been affirmed to be an infringer and being stripped of its other defenses.

Jay Alexander argued the appeal, and the successful result could not have been achieved without the substantial work of the entire Milbank team lead by partners Bob Koch and Jim Pooley, and included Einar Stole, Chris Gerlach, Jennifer Overly, Lisa Coward, Nga Pham, Nora Sherry and Nini Lim, some of whom have been working on this long-lived case since it was filed in 1996.