Elan Pharmaceuticals, Inc. v. Mayo Foundation for Medical Education & Research

ORDER GRANTING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT OF ANTICIPATION

INTRODUCTION

The issue on defendant’s motion for summary judgment is whether a prior-art patent that discloses a “recipe” for producing transgenic mice, some of which will certainly end up with a particular characteristic and some of which won’t, anticipates claims based on the same recipe but covering only those mice that end up with the particular characteristic.

STATEMENT

A suspected cause of Alzheimer’s disease is the formation of plaque in the brain comprised residue from the break-down of an APP polypeptide. This residue is called A2u, and the parties agree that it is always produced together with ATF-be-taAPP, and vice versa. ATF-betaAPP is not suspected to form plaque. Searching for a cure to Alzheimer’s disease, scientists screen various drugs on mice aimed at prohibiting or otherwise affecting the production of mice that produce AXu (and therefore also ATF-betaAPP) are useful in this research. The mice that are used in these tests are the patented technology at issue in this case.

The patents-in-suit are United States Patent No. 5,612,486 and United States Patent No. 5,850,003, assigned to…