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ARTICLE · 04 JUNE 2018

Petitioner Beware – Claim Construction Choice Can Make Or Break Your Case

McDermott Will & Emery
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Addressing the requirements to institute an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) denied a petition because it failed to map the challenged claims

United StatesIntellectual Property
Danai N. Mhembere
Danai N. Mhembere
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Addressing the requirements to institute an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) denied a petition because it failed to map the challenged claims to the asserted prior art using the claim construction that the petitioner believed was correct. Hologic, Inc. v. Enzo Life Sciences, Inc., Case No. IPR2018-00019 (PTAB, Apr. 18, 2018) (Paper 17) (Fitzpatrick, APJ) (Yang, APJ, concurring) (Paulraj, APJ, dissenting).

Enzo owns a patent directed to nucleic acid detection technology that can be used to diagnose genetic defects by isolating or separating certain genetic materials. Enzo sued Hologic for patent infringement in district court. In response, Hologic filed a petition for IPR challenging various claims of Enzo's patent. Enzo filed an unopposed motion for a district-court-type Phillips claim construction because the challenged patent would expire less than 18 months from entry of the Notice of Filing Date Accorded to the Petition. The

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