Bio-Rad Laboratories Inc. has lost an appeal of a patentinfringement suit it filed against New Jersey-based PharmaciaLKB Biotechnology Inc. in a case concerning a method ofpurifying monoclonal antibodies.
The U.S. Court of Appeals for the federal circuit affirmed a SanFrancisco jury verdict that invalidated Bio-Rad's patent. Thejudgment in favor of Pharmacia had been entered in April aftera month-long trial.
Bio-Rad filed suit in 1988 against Pharmacia accusing thecompany, which sells chromatography equipment, ofencouraging researchers to infringe Bio-Rad's patent coveringthe use of certain high-salt buffers to purify antibodies withprotein A affinity chromatography.
Pharmacia's attorney Robert Stier, Jr. of Portland, Maine, toldBioWorld that the company informs its customers in technicalbulletins and other materials about the ways reagents can bestbe used, and U.S. researchers have been using high-salt bufferssince 1982.
Bio-Rad applied for its patent in 1984 and was granted thepatent in 1987, he said. The jury found that Bio-Rad's inventionwas obvious and therefore the patent was not valid, and thatPharmacia had not induced anyone to infringe the patent.
Jurors also found that Bio-Rad was not the first to use thepatented process and that the company improperly withheldinformation from its patent application because it did notreveal the final chemical composition of its commercial buffer,instead describing a discarded research buffer, Stier said. Heclaimed Bio-Rad wanted to keep the simple formula a tradesecret so researchers would buy the reagent instead ofduplicating it themselves. Neither Bio-Rad's spokesman nor itspatent attorneys returned phone calls from BioWorld bypresstime Tuesday.
In its appeal, Bio-Rad maintained the jury should have foundthe patented process was not obvious, that the company didnot withhold information from its application and thatPharmacia had encouraged infringement. The appellate courtruled on the underlying issue, finding the patent was invalid,Stier said, and rejected the remaining claims.
An expert testified for Bio-Rad in a pretrial deposition that thepatent claims were worth $30 million, but the jury did notproceed to the damages phase of trial, added Pharmacia co-counsel David Eiseman of Bronson, Bronson & McKinnon in SanFrancisco.
Bio-Rad was represented by four patent lawyers with the SanFrancisco patent firm Townsend & Townsend: Albert J. Hillman,Roger L. Cook, Theodore G. Brown, II and Susan Spaeth.
Pharmacia--the United States sales subsidiary of the Swedishcompany--was represented by Stier of Bernstein, Shur, Sawyer& Nelson in Portland, Maine and by Eiseman and Kenneth E.Keller from Bronson, Bronson & McKinnon. All three are triallawyers in general practice.
-- Nancy Garcia Associate Editor
(c) 1997 American Health Consultants. All rights reserved.