Federal Circuit Denies Retrial to Pacific Biosciences in DNA-Sequencing Patent Dispute

The Federal Circuit on Tuesday denied a new trial to Pacific Biosciences of California Inc. (PacBio) after the company appealed following claims that remarks the defendant made at the top of the trial caused prejudice.

PacBio’s suit originated in the District of Delaware in 2017 over allegations that Oxford Nanopore Technologies was infringing on several of the plaintiff’s patents covering DNA-sequencing methods. The parties’ trial began March 9, 2020, already in the midst of the spread of COVID-19, but still on the cusp of the knowledge of the global health crisis’ scale. Prior to trial, the district court ordered, among other things, that “it would be inappropriate (of Oxford) to put before the jury evidence or argument about the potential impact of a verdict in favor of PacBio—such as higher prices or slower medical research—as these issues are not for the jury to decide,” the circuit court recalled.

Both parties’ opening statements at trial acknowledged COVID-19 and its relevance in connection with DNA-sequencing technology, “and it is undisputed that Oxford told PacBio the night before the openings that it would mention such relevance, and that PacBio did not object in advance,” the court said. While PacBio mentioned the pandemic’s relevance “in passing,” Oxford more extensively referenced the pandemic, using it to bolster its argument that PacBio was trying to exclude the defendant from the market through litigation and why that matters in such a public health crisis, the court noted. PacBio objected to Oxford’s opening statements, claiming that it violated the motion in limine that resulted in the pretrial court order. 

The jury returned its verdict one day after deliberations began, on March 18, 2020. It found that the defendant had infringed all asserted claims of the patents-in-suit, but also that the asserted claims were “invalid for lack of enablement.” PacBio moved for retrial, arguing that the verdict was unfounded and that Oxford’s COVID-19-related comments at opening were prejudicial. The court denied the motion on both fronts, opining that the jury had enough evidence to support their findings and that “(t)here is just no indication … that this jury was inflamed, that it was not careful,” or that the jury otherwise failed to properly consider the evidence because of the mentions of COVID-19.”

The circuit court agreed with the district court, concluding that the jury had sufficient evidence to determine that the asserted claims were not enabled and that, absent an advance objection to COVID-19-related opening statements, PacBio’s case for a new trial is not strong enough.

“Given all the circumstances, we do not see a basis for disturbing the district court’s assessment that there was an insufficient likelihood that the improper opening remarks had an adverse impact on the ultimate verdict to justify a new trial in this case,” according to the court.

Weil, Gotshal & Manges LLP represents the plaintiff. Baker Botts represents the defendant.