Contrary claim construction at USPT no reason to reconsider court’s construction

Enzo Biochem, Inc. et al. v. Molecular Probes, Inc.

Case Number: (1:03-cv-03816-RJS)

Judge Sullivan denied Enzo’s request to reconsider the court’s claim construction of U.S. Patent No. 5,449,767 (“Modified polynucleotides and methods of preparing same”). The late Judge Sprizzo had previously construed the claims. After the same patent was construed differently in D. Conn. litigation, and following an appeal to the Federal Circuit, Judge Sprizzo denied a request for reconsideration. He said that the Federal Circuit’s review had not even suggested that his construction was wrong. Enzo renewed its request following an ex parte reexamination of the patent, where the USPTO came to a construction that is  “apparently consistent” with the Connecticut court’s and contrary to Judge Sprizzo’s construction.

Judge Sullivan, in denying Enzo’s motion, noted that the USPTO’s construction is not binding on the court. He further stated that the apparent consistency between the other constructions neither alters the court’s conclusion about whether reconsideration is warranted nor undermines the soundness of Judge Sprizzo’s original construction.

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