By Memorandum Opinion entered by The Honorable Leonard P. Stark in Enzo v. Gen-Probe Inc., Civil Action No. 12-104-LPS (consolidated) (D.Del., June 28, 2017), the Court granted the motion of defendants Gen-Probe Incorporated and Hologic, Inc. for summary judgment of invalidity of U.S. Patent No. 6,992,180 (“the ‘180 patent”) on nonenablement grounds. In doing so, the Court found that there was no genuine dispute of fact that the ‘180 patent specification lacks enablement and that a reasonable jury could not find for Enzo. Id.at *14. “Instead, the only conclusion a reasonable jury could reach is that clear and convincing evidence proves the ‘180 patent is invalid for nonenablement.” Id.

The Court explained that, based on the record, a reasonable factfinder could only find: (1) the quantity of experimentation necessary to arrive at embodiments equal to the full scope of the claims is undue; (2) insufficient direction or guidance is presented in the ‘180 patent to allow a person of ordinary skill in the art (“POSA”) to avoid undue experimentation; (3) an insufficient number of working examples are present; (4) the invention arises in a field of art that was highly unpredictable at the time of the invention; (5) the prior art showed that the pertinent field was unpredictable; (6) although the relative skill of those in the art was high, persons of ordinary skill in the art at the time of the invention did not have sufficient knowledge to fill in what was missing from the ’180 patent; (7) the art was highly unpredictable; and (8) the claims in the ‘180 patent are extremely broad. Id.at *16. Accordingly, the Court concluded that the specification of the ‘180 patent did not sufficiently teach those of ordinary skill in the art how to make and use the full scope of the claimed invention without undue experimentation. Thus, summary judgment that the ‘180 patent is invalid for nonenablement was warranted.

A copy of the Memorandum Opinion is attached.

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