After a jury determined that Stratagene infringed on Invitrogen’s U.S. Patent No. 4,981,797 by making and selling its competent E. coli cell products (see earlier note), the court has now entered judgment awarding Invitrogen $16.2 million plus prejudgment interest, as well as reasonable attorney fees to be determined by the court. The judgment included a court-ordered enhancement of the original damages awarded by the jury due to the court’s determination of Stratagene’s willful infringement of Invitrogen’s patent. The court also entered an injunction against further infringement by Stratagene.

The new decision by the United States District Court for the Western District of Texas awarded Invitrogen treble damages, which approximately triples the earlier jury award. Invitrogen had moved for entry of judgment based on the jury’s verdict, moved that the enhanceable portion of the damage award ($4,759,779.60) be trebled pursuant to 35 U.S.C. § 284, moved for an award of prejudgment interest under 35 U.S.C. § 284, and moved to have the case deemed “exceptional” pursuant to 35 U.S.C. § 285 and for leave to submit evidence of its attorneys’ fees and costs. The court entered its order disposing of all pending motions after having previously determined as a matter of law that Stratagene infringes claims 1, 2, 4, 5, 7, 8, 11, 14 and 15 of United States Patent No. 4,981,797, and that Stratagene’s indefiniteness defense should be dismissed as a matter of law.

The earlier jury award gave Invitrogen a 15% royalty rate on sales between the years 1997 and 2004 (for a total of $7.8 million in damages) and found Stratagene to have willfully infringed the patent only between the years 1997 and 2001. The jury found that Invitrogen was not entitled to lost profits because Stratagene has had a non-infringing manufacturing process for competent cells. Stratagene had previously modified its process for manufacturing competent E. coli cell products and Stratagene products sold in recent years and currently offered for sale will not be affected by the jury verdict.

The ‘797 patent involves the introduction of foreign, recombinant DNA molecules into receptive E. coli cells to improve the cells’ “competence,” i.e., their ability to take up and establish exogenous DNA and replicate this DNA as they multiply. A cell that accepts alien DNA is called a transformable cell. Claim 1 of the ‘797 patent claims:

A process for producing transformable E. coli cells of improved competence by a process comprising the following steps in order: (a) growing E. coli in a growth-conductive medium at a temperature of 18°C to 32°C; (b) rendering said E. coli cells competent; and (c) freezing the cells.

Stratagene made thirty-four competent E. coli cell lines by a process “including the steps of incubating cells at 37°C, growing the cells in a fermenter at 26°C, and freezing the cells.” Invitrogen sued Stratagene for infringement and the district court construed the claims and then granted Stratagene’s summary judgment motion of non-infringement. Invitrogen appealed, disputing the lower court’s construction of both “improved competence” in the preamble and “growing” in step (a).

The district court found literal infringement of the ’797 patent; decided that Claim 1 was not indefinite under 35 U.S.C. § 112, 2; and found the claims invalid under the public use provision of 35 U.S.C. § 102(b).

Stratagene said it had previously modified its process for manufacturing competent E. coli cell products and Invitrogen had agreed that Stratagene products sold in recent years and currently offered for sale will not be affected by the jury verdict.

Stratogene said it will appeal, challenging the finding of validity of the patent, the appropriateness of the damages determined by the jury and the award of attorney’s fees.

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