Carnegie Mellon University v. Hoffman-La Roche, Inc.

ORDER GRANTING DEFENDANTS’ RENEWED MOTION FOR SUMMARY JUDGMENT

On March 16, 2001, the Court heard argument on the Roche defendants’ motion for summary judgment on their counterclaim for declaratory judgment that claims 1-19, 22-40 and 43-45 of the ’708 patent are invalid. Having carefully considered the arguments of counsel and the papers submitted, the Court GRANTS the motion for the reasons set forth below.

BACKGROUND

Plaintiffs Carnegie Mellon University (“Carnegie Mellon”) and Three Rivers Bio-logicals, Inc. filed suit against several defendants alleging infringement of U.S. Patent No. 4,767,708 (’708 patent) and U.S. Patent No. 5,126,270 (’270 patent), both entitled “Enzyme Amplification and Purification.” The patents-in-suit are directed to (1) recombinant plasmids for the controlled expression of an enzyme identified in the ’708 patent as “DNA polymerase I,” (2) processes related to the construction of such plasmids, and (3) processes related to the culturing of host cells containing such plasmids. The patents derive from the same original application. The Patent and Trademark Office (“PTO”) issued the ’708 patent from a “parent” application, No. %8 , 638 (’638…