Case: 20-2155 Document: 42 Page: 1 Filed: 05/11/2021
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.,
`Plaintiff-Appellant
`
`v.
`
`OXFORD NANOPORE TECHNOLOGIES, INC.,
`OXFORD NANOPORE TECHNOLOGIES, LTD.,
`Defendants-Appellees
`______________________
`
`2020-2155, 2020-2156
`______________________
`
`Appeals from the United States District Court for the
`District of Delaware in Nos. 1:17-cv-00275-LPS, 1:17-cv-
`01353-LPS, Chief Judge Leonard P. Stark.
`______________________
`
`Decided: May 11, 2021
`______________________
`
`EDWARD R. REINES, Weil, Gotshal & Manges LLP, Red-
`wood Shores, CA, argued for plaintiff-appellant. Also rep-
`resented by ROBERT S. MAGEE, DEREK C. WALTER.
`
` MICHAEL HAWES, Baker Botts, LLP, Houston, TX, ar-
`gued for defendants-appellees. Also represented by
`ELIZABETH FLANNERY; STEPHEN M. HASH, Austin, TX.
` ______________________
`
`Before LOURIE, TARANTO, and STOLL, Circuit Judges.
`
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`PACIFIC BIOSCIENCES v. OXFORD NANOPORE TECHNOLOGIES
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`TARANTO, Circuit Judge.
`Pacific Biosciences of California, Inc. (PacBio) sued Ox-
`ford Nanopore Technologies, Inc. and Oxford Nanopore
`Technologies, Ltd. (collectively, Oxford), accusing Oxford of
`infringing several of its patents, including U.S. Patent Nos.
`9,546,400 and 9,772,323. A jury found all asserted claims
`infringed but also determined that they are invalid under
`35 U.S.C. § 112 for lack of enablement. The district court
`denied PacBio’s motion for judgment as a matter of law
`(and for a new trial) on enablement. The district court also
`denied PacBio’s request that the court grant a new trial be-
`cause of Oxford’s improper remarks during opening, re-
`marks
`that
`included references
`to
`the potential
`applications of its accused products to the then-emerging
`global COVID-19 crisis. PacBio argued that the remarks
`caused prejudice that could not be remedied by the curative
`instruction the district court gave at PacBio’s request. We
`affirm.
`
`I
`PacBio owns the ’400 and ’323 patents, which share a
`specification, so we generally cite only the ’400 patent’s
`specification. The patents describe methods for sequencing
`a nucleic acid, such as deoxyribonucleic acid (DNA). The
`methods use nanopore technology, described in one form as
`follows: nucleic acids are drawn through nanometer-sized
`holes formed in a substrate, and while they transit the
`holes, their sequences of nucleotides are identified or char-
`acterized based on changes in electric current passing
`through the substrate. See ’400 patent, col. 1, lines 25–27;
`id., col. 8, lines 55–61. The ’323 patent issued from a con-
`tinuation of a continuation of the application that issued as
`the ’400 patent; and both claim priority to a provisional ap-
`plication filed on April 10, 2009.
`The patents, in discussing the prior art, explain that
`“rapid determination of the nucleotide sequence . . . is a
`major goal of researchers seeking to obtain the sequence
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`for the entire genome of an organism.” Id., col. 1, lines 19–
`22. The patents’ solution includes a system with “upper
`and lower fluidic regions” above and below a membrane
`having a nanopore passage from one region to the other,
`with electrodes that permit application of a voltage to cre-
`ate a potential difference that causes molecules to “trans-
`locate” between the two regions. Id., col. 8, lines 35–38, 48–
`61; id., col. 9, lines 6–15, 47–53; id., col. 10, line 64 through
`col. 11, line 5. The membrane in which the nanopores are
`formed, as described by the patents, can use lipid or solid-
`state materials and may include “hybrid” nanopores,
`formed by treating substrate material with organic mole-
`cules, such as proteins, that serve as “spacers” to narrow
`the nanopores so that only single strands of DNA (ssDNA)
`or ribonucleic acid (ssRNA) pass through, “in a sequential,
`single file order.” Id., col. 1, lines 28–31; id., col. 14, lines
`1–60; id., col. 15, lines 3–10; id., col. 17, lines 42–53; see
`also id., Fig. 5.
`The patents further describe using “processive DNA-
`binding enzyme[s] to enzymatically regulate the rate of
`ssDNA translocation through the nanopore.” Id., col. 25,
`lines 11–13; see also id., col. 24, lines 53–54 (“In certain
`embodiments, polymerases are used to modulate the pas-
`sage of a nucleic acid strand through a nanopore.”). Too
`fast a rate may impair accuracy, and enzymes can “promote
`efficient sequence detection, e.g., by allowing a reaction to
`proceed at a rate that provides for a desirable balance be-
`tween accuracy and throughput.” Id., col. 25, lines 3–10.
`The patents state that enzymes can bind to ssDNA in the
`fluid, then combine with the protein “spacer” in the na-
`nopore to “act as a plug,” but that “[a]pplying a strong
`enough [electric] potential can rip the ssDNA from the
`tightly bound exonuclease, advancing the ssDNA through
`the nanopore.” Id., col. 25, lines 29–34; see also id., Fig.
`25(A) & (B). Pulses that alternate large and small poten-
`tial differences, when used in connection with the enzyme,
`“can pull the ssDNA through the nanopore in steps, for
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`example one base at a time. The rate and duty cycle of the
`pulses could be altered to optimize the translocation rate
`and measurement duration.” Id., col. 25, lines 34–40.
`For the sequencing of ssDNA (identifying the sequence
`of its individual nucleotides), the patents describe use of
`“an array of electrical/CMOS [complementary metal-oxide-
`semiconductor] components (amplifiers)” that measure as-
`pects of a current through the substrate—e.g., amplitude
`and duration of “current blockage,” and “interpulse dura-
`tion”—as ssDNA moves through the nanopore. Id., col. 20,
`lines 6–9; id., col. 29, lines 43–46; id., col. 41, lines 46–56.
`The patents note, however, that such measurements “can
`overlap significantly” between different nucleotides, creat-
`ing “miscall errors.” Id., col. 29, lines 46–50; see also id.,
`col. 41, lines 60–63 (“Thus, if the probability distribution of
`current blockage (likely Gaussian-like) for a nucleotide is
`highly overlapping with that of a different nucleotide, then
`there may be a large probability of miscall if only this met-
`ric is used.”). This problem, the patents state, prevented
`prior art systems from “achiev[ing] single nucleotide reso-
`lution, especially in embodiments that might be scaled to a
`commercially viable DNA sequencing system.” Id., col. 39,
`lines 49–51.
`The patents state a reason for the resolution troubles:
`“[T]he amplitude of electric current passing through the
`nanopore (which constitutes the signal) depends on the
`identity of several bases that reside in the pore throughout
`the duration of the current measurement.” Id., col. 39,
`lines 52–55. Given that there are four different nucleo-
`tides, there are 4N possibly different current levels if
`“N=the number of bases that affect the current measure-
`ment.” Id., col. 39, lines 55–60; see also id., col. 41, lines
`46–56. But, the patents note, there may not be 4N distinct
`current levels for the 4N possible N-long nucleotide se-
`quences (“some of [the possibilities] may be degenerate”).
`Id., col. 39, lines 59–60.
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`The sole independent claim of the ’400 patent, claim 1,
`recites:
`1. A method for sequencing a nucleic acid template
`comprising:
`a) providing a substrate comprising a nanopore
`in contact with a solution, the solution compris-
`ing a template nucleic acid above the nanopore;
`b) providing a voltage across the nanopore;
`c) measuring a property which has a value that
`varies for N monomeric units of the template
`nucleic acid in the pore, wherein the measuring
`is performed as a function of time, while the
`template nucleic acid is translocating through
`the nanopore, wherein N is three or greater; and
`d) determining the sequence of the template nu-
`cleic acid using the measured property from
`step (c) by performing a process including com-
`paring the measured property from step (c) to
`calibration information produced by measuring
`such property for 4 to the N sequence combina-
`tions.
`’400 patent, col. 47, line 37 through col. 48, line 6. Depend-
`ent claim 4 of the ’400 patent includes the additional re-
`quirement that “the translocation rate through the pore is
`enzymatically controlled.” Id., col. 48, lines 11–12. The
`sole independent claim of the ’323 patent, claim 1, is simi-
`lar to claim 1 of the ’400 patent, but not identical: for ex-
`ample, it requires a “plurality of template nucleic acids
`above the nanopore” and includes an “enzymatically con-
`trolled” limitation (as in dependent claim 4 of the ’400 pa-
`tent). See ’323 patent, col. 47, lines 13–34. PacBio asserted
`claims 1, 4, and 15 of the ’400 patent, and claims 1, 4, and
`18 of the ’323 patent. The parties agree that the patents
`and the asserted claims are materially similar for purposes
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`of the issues on appeal. See PacBio Opening Br. 22 n.3;
`Oxford Br. 3 n.1.
`
`B
`PacBio sued Oxford in the District of Delaware in 2017,
`asserting in two separately filed cases that Oxford in-
`fringed the ’400 and ’323 patents, as well as two other pa-
`tents (U.S. Patent Nos. 9,678,056 and 9,738,929) that are
`not at issue on appeal. Before trial, the district court
`granted a PacBio motion in limine (MIL) “to prevent [Ox-
`ford] from using ‘pejorative’ terms (such as ‘non-practicing
`entity,’ ‘NPE,’ and ‘paper patents’) and from presenting ev-
`idence about the consequences of this litigation.” J.A. 27
`(MIL Order). The court’s order continued, “it would be in-
`appropriate to put before the jury evidence or argument
`about the potential impact of a verdict in favor of PacBio—
`such as higher prices or slower medical research—as these
`issues are not for the jury to decide . . . .” Id.
`The trial began on March 9, 2020, as concerns about
`the new coronavirus SARS-CoV-2, causing COVID-19,
`were already rampant but had not yet produced the large-
`scale shutdowns that would occur in a matter of days. The
`opening statements from both parties acknowledged
`COVID-19 and the relevance of the DNA-sequencing tech-
`nology at issue to dealing with this virus and others; and it
`is undisputed that Oxford told PacBio the night before the
`openings that it would mention such relevance, and that
`PacBio did not object in advance. PacBio, in its opening,
`mentioned the new coronavirus in passing. J.A. 1073 (Tr.
`120:24–121:11 (PacBio mentioning coronavirus and se-
`quencing can “[m]aybe help develop a vaccine”)). Then Ox-
`ford did so much more extensively (than PacBio did and
`than prefigured in Oxford’s pre-opening notice to PacBio)
`and with specific factual assertions. See J.A. 1079 (Tr.
`145:4–12), 1081–82 (Tr. 153:3–156:25 (Oxford discussing
`“infectious disease monitoring” and telling a story about
`sending products to Wuhan, China, at the outset of the
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`coronavirus outbreak)). Oxford made those remarks as
`part of its references to PacBio seeking to exclude Oxford’s
`products and to previous litigation between the parties on
`other patents. J.A. 1079 (Tr. 143:2–145:12), 1084 (Tr.
`165:9–12), 1085 (Tr. 169:2–17).
`PacBio objected to Oxford’s opening, mentioning both
`the reference to previous litigation and the statement that
`PacBio was “attempting to exclude it from the market,
`which [the MIL Order] said that the effect of the case and
`the possible ramifications was clearly an implication.”
`J.A. 1084–85 (Tr. 165:13–166:11); see also J.A. 1089
`(Tr. 185:3–9 (preserving objection)). The next day, PacBio
`argued in favor of its motion for two curative instructions
`to counteract “the exploitation of the violation of the MIL
`[Order].” J.A. 1153 (Tr. 279:2–3).1 The district court
`
`
`1 See J.A. 1153 (Tr. 279:2–19) (“The issue is the clear
`vio—that is the exploitation of the violation of the MIL. I
`mean, it’s so cynical. The violation of the MIL is not the
`mention of coronavirus. I knew they were going to do. We
`did it. We’ve done that same work. We weren’t flamboyant
`about it. They were. Over the top, one might say. [¶] But
`leaving that aside, that’s just exploiting the violation. The
`violation is we specifically said they shouldn’t be stating
`that we’re trying to exclude nanopore sequencing. That is
`exactly what the Court ordered. That is exactly what [Ox-
`ford’s counsel] knowingly, intentionally, and willfully did
`to the jury, knowing, like we all know, the bell can’t be un-
`rung. Presumably, a happy client somewhere. And that
`that is what they did. [¶] And the media [in a report of the
`previous day’s opening] said that the trial is about PacBio
`trying to take the coronavirus technology off the market.
`Why? Because that is the only way to understand the tran-
`script.”); J.A. 1155 (Tr. 287:23–288:3) (“Your Honor, there
`was a clear violation of the order and the statement of ex-
`ploiting it for the Coronavirus is very different. It’s not a
`
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`criticized Oxford for violating the MIL Order, recognizing
`that the COVID-19 references were part of that violation,
`and agreed to give the curative instructions that PacBio
`had requested. J.A. 1156–57 (Tr. 292:17–294:12).
`One instruction addressed the reference to other pro-
`ceedings. J.A. 1159 (Tr. 303:10–15). The other stated:
`In opening statement, [Oxford] argued that
`this isn’t the first time that PacBio has tried to use
`its patents to exclude nanopore sequencing. How-
`ever, if you find [Oxford] liable for patent infringe-
`ment, you are not—you are only being asked to
`award monetary compensation to PacBio. You are
`not being asked to exclude any [Oxford] product
`from the market or to stop any research work being
`performed on [Oxford] products.
`J.A. 1159 (Tr. 303:17–24). Before giving the instructions,
`the court also warned both parties about “turn[ing] this re-
`ally into a trial about an ongoing global health crisis that
`has to be on the minds of the jury,” which would be “unfair”
`and “improper” and would “inflam[e] the jury” and “would
`create a real risk of a verdict” not based on the evidence.
`J.A. 1157 (Tr. 293:22–294:5). The court required the par-
`ties, from then on, to disclose to each other “any reference,
`any evidence, any suggestion that you think you’re going to
`make to Coronavirus” and bring any disputes to the court’s
`attention “before the witnesses take the stand.” J.A. 1157
`(Tr. 294:6–12).
`PacBio did not seek a new trial at that time. During
`closing, Oxford used words such as “exclude” and “block,”
`borrowing words from PacBio testimony or documents, see
`J.A. 1105 (Tr. 247:3–6), 1503 (Tr. 1225:11–1226:3), and the
`
`violation of any order to mention the word, although it may
`come to that if this continues. And so that’s confusing, that
`they’re mushing the two things together.”).
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`closing was not found to be improper. See J.A. 1686–88 (Tr.
`1612:21–1618:21), 1689 (Tr. 1622:3–25); see also J.A. 1989–
`90, 1996–97. Moreover, PacBio has not identified any post-
`opening COVID-19 comment made by Oxford to the jury,
`and the district court noted that Oxford did not violate the
`MIL Order after the opening. See J.A. 53 (7/30/20 Tr. 17:9–
`14); Pac. Biosciences of Cal., Inc. v. Oxford Nanopore
`Techs., Inc., Nos. 1:17-cv-00275, 1:17-cv-01353, 2020 WL
`4699049, at *5 (D. Del. Aug. 13, 2020) (Post-Trial Decision).
`The case went to the jury on March 17, 2020, J.A. 1706,
`and the jury returned its verdict on March 18, 2020, J.A.
`1741–43; see J.A. 399–414 (verdict). The jury found all as-
`serted claims of the ’400 and ’323 patents infringed, and
`also supported by the written description, but also deter-
`mined that all of the asserted claims are invalid for lack of
`enablement. J.A. 401–03, 407–08. The district court en-
`tered judgment for Oxford based on the jury’s verdict on
`March 31, 2020.
`After trial, PacBio renewed its motion for judgment as
`a matter of law (JMOL) on enablement lodged during trial
`under Federal Rule of Civil Procedure 50. J.A. 27,435–60.
`PacBio also moved for a new trial under Rule 59, arguing
`that the jury’s enablement verdict was unsupported and
`that Oxford’s statements regarding COVID-19 violated the
`MIL Order and were so prejudicial that the case should be
`retried. Id. The district court denied PacBio’s motion.
`Post-Trial Decision, 2020 WL 4699049, at *1.
`For JMOL on the enablement verdict, the court noted
`a statement by Oxford’s expert, Dr. Nick Goldman, on cross
`examination, that a relevant artisan, having a particular
`piece of prior art, could perform the method of claim 1 of
`the ’400 patent in 2009, and the court also noted Dr. Gold-
`man’s statement that he did not know the factors specified
`in In re Wands, 858 F.2d 731 (Fed. Cir. 1988). Post-Trial
`Decision, 2020 WL 4699049, at *1. But the court concluded
`that the record “as a whole” did “contain substantial
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`evidence to support the verdict” of non-enablement. Id. at
`*2. The district court identified evidence beyond Dr. Gold-
`man’s testimony that was relevant to the Wands factors
`and could support the jury’s verdict; and the court noted
`Dr. Goldman’s testimony that the claims at issue were not
`enabled and stressed that the jury was free to consider Dr.
`Goldman’s credibility and all the evidence. Id. at *2–3.
`The court similarly rejected PacBio’s motion for a new
`trial based on references to COVID-19 made in Oxford’s
`opening statement. Acknowledging that such references
`implicated the possible consequences of the jury’s verdict
`in violation of the MIL Order, the court explained, “[t]here
`is just no indication . . . that this jury was inflamed, that it
`was not careful,” or that the jury otherwise failed to
`properly consider the evidence because of the mentions of
`COVID-19. Id. at *8–9 (alteration in original).
`The court entered final judgment on August 13, 2020.
`Id. at *1. PacBio timely appealed. We have jurisdiction
`under 28 U.S.C. § 1295(a)(1).
`II
`On appeal, PacBio argues that the jury’s verdict find-
`ing that the ’400 and ’323 patents lack enabling disclosure
`is unsupported by the evidence, requiring JMOL in its fa-
`vor. See PacBio Opening Br. 21–41. PacBio also argues
`summarily for a new trial based on the enablement evi-
`dence. Id. at 42. Much more fully, PacBio argues for a new
`trial based on Oxford’s statements about COVID-19. Id. at
`42–60. We reject these challenges.
`A
`We review a district court’s decision on a JMOL motion
`de novo, following the law of the regional circuit, here the
`Third Circuit. Leader Techs., Inc. v. Facebook, Inc., 678
`F.3d 1300, 1305 (Fed. Cir. 2012). “[V]iewing the record in
`the light most favorable to the verdict winner and drawing
`all reasonable inferences in its favor,” id., we ask whether
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`“a reasonable jury would not have a legally sufficient evi-
`dentiary basis to find for the party,” Fed. R. Civ. P. 50(a)(1).
`See also In re Lemington Home for the Aged, 777 F.3d 620,
`626 (3d Cir. 2015) (JMOL may be granted “only if, as a mat-
`ter of law, the record is critically deficient of that minimum
`quantity of evidence from which a jury might reasonably
`afford relief” to the verdict winner). “[W]hether a patent
`satisfies the enablement requirement is a question of law
`based on underlying factual findings.” McRO, Inc. v. Ban-
`dai Namco Games America Inc., 959 F.3d 1091, 1096 (Fed.
`Cir. 2020). Here, “we review the factual underpinnings of
`enablement for substantial evidence.” Idenix Pharms. LLC
`v. Gilead Sciences Inc., 941 F.3d 1149, 1154 (Fed. Cir. 2019)
`(internal quotation marks omitted). With no greater detail
`in the verdict, we treat the jury as having made all verdict-
`supporting factual findings that are supported by substan-
`tial evidence. See Martek Biosciences Corp. v. Nutrinova,
`Inc., 579 F.3d 1363, 1378 (Fed. Cir. 2009) (describing “im-
`plicit factual findings” approach); Kinetic Concepts, Inc. v.
`Smith & Nephew, Inc., 688 F.3d 1342, 1359–60 (Fed. Cir.
`2012) (same for obviousness).
`“The requirement of enablement, stated in 35 U.S.C.
`§ 112, enforces the essential ‘quid pro quo of the patent bar-
`gain’ by requiring a patentee to teach the public how ‘to
`practice the full scope of the claimed invention.’” McRO,
`959 F.3d at 1099–100 (quoting AK Steel Corp. v. Sollac, 344
`F.3d 1234, 1244 (Fed. Cir. 2003)); see also J.E.M. Ag Sup-
`ply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 142
`(2001). A claim is not enabled if (as it is the challenger’s
`burden to prove by clear and convincing evidence) a rele-
`vant artisan would not be able to practice the claimed in-
`vention “without undue experimentation,” Amgen Inc. v.
`Sanofi, 987 F.3d 1080, 1084 (Fed. Cir. 2021) (internal quo-
`tation marks omitted), a determination typically guided by
`the following “factual considerations”: “(1) the quantity of
`experimentation necessary, (2) the amount of direction or
`guidance presented, (3) the presence or absence of working
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`examples, (4) the nature of the invention, (5) the state of
`the prior art, (6) the relative skill of those in the art, (7) the
`predictability or unpredictability of the art, and (8) the
`breadth of the claims,” id. (quoting Wands, 858 F.2d at
`736–37). “[A] patentee chooses broad claim language at the
`peril of losing any claim that cannot be enabled across its
`full scope of coverage.” MagSil Corp. v. Hitachi Glob. Stor-
`age Techs., Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012);
`Amgen, 987 F.3d at 1084; Idenix, 941 F.3d at 1154; Trustees
`of Boston Univ. v. Everlight Elecs. Co., 896 F.3d 1357, 1362
`(Fed. Cir. 2018); Crown Operations Int’l, Ltd. v. Solutia
`Inc., 289 F.3d 1367, 1378–79 (Fed. Cir. 2002); Nat’l Recov-
`ery Techs. Inc. v. Magnetic Separation Systems, Inc., 166
`F.3d 1190, 1196 (Fed. Cir. 1999).
`Although PacBio seems to suggest otherwise at some
`points, it is not enough for enablement here that relevant
`artisans knew how to perform some “nanopore sequencing”
`before the priority date of the ’400 and ’323 patents. What
`matters is the scope of the asserted claims, which (taken as
`a whole, as PacBio does) claim methods of “determining the
`sequence of the template nucleic acid,” without limiting the
`character of that “template nucleic acid,” by measuring cer-
`tain properties (in particular, electric current properties)
`as the nucleic acid passes through a nanopore, using a de-
`termination of the number of nucleotides that affect the
`current (N), and using enzymes to control the rate of pas-
`sage through the nanopore. See supra pp. 5–6. Notably,
`PacBio acknowledges that the ’400 and ’323 patents do not
`differentiate between “particular types of DNA.” PacBio
`Opening Br. 39.
`In arguing for JMOL, PacBio places principal reliance
`on the following exchange from the deposition of Oxford’s
`expert, Dr. Goldman, introduced at trial during cross-ex-
`amination of Dr. Goldman:
`‘Question: A person of ordinary skill in the art in
`2009 with the Akeson grant in front of them you
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`believe would be able to successfully perform the
`method of claim 1 of the ’400 patent?
`‘Answer: Yes.’
`J.A. 1480 (Tr. 1134:2–6). The “Akeson grant” was a grant
`application to the National Institutes of Health filed by an-
`other Oxford witness, Dr. Mark Akeson, before 2009. See
`J.A. 1836. PacBio asserts that, in the quoted exchange,
`“Dr. Goldman admitted on cross-examination that the
`claims of the ’400 and ’323 Patents were enabled.” PacBio
`Opening Br. 14; see also id. at 22 & n.3 (“Dr. Goldman
`squarely admitted that a person skilled in the art in 2009
`would be able to successfully perform the method of claim
`1 of the ’400 Patent.”; footnote attached, stating: “For pur-
`poses of enablement, there is no difference between the
`’400 and ’323 Patent[s].”); id. at 18.
`The jury was not required to give Dr. Goldman’s an-
`swer, even understood in isolation, the broad meaning Pac-
`Bio now gives it. It is enough to say that, in the absence of
`further elaboration of the point, the jury could have under-
`stood Dr. Goldman to be saying no more than that a rele-
`vant artisan could have “perform[ed] the method of claim 1
`of the ’400 patent,” J.A. 1480, on the particular subset of
`nucleic acids addressed in the Akeson grant, namely, “DNA
`hairpins,” which were synthesized nucleic acids used to
`test the viability of such sequencing technologies. J.A.
`1836–54. Especially in light of other evidence about the
`difference between the synthetic nucleic acids Akeson ad-
`dressed and biological DNA, the jury could properly under-
`stand the specific answer to the specific question on which
`PacBio relies not to be conceding that a skilled artisan
`could make and use the full scope of the invention (even of
`claim 1 of the ’400 patent, let alone all the asserted claims),
`including the full range of “nucleic acid templates.” In fact,
`just before that question and answer, the jury heard Dr.
`Goldman answer “no” to the question whether “a person of
`ordinary skill in the art with the ’400 patent in front of
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`PACIFIC BIOSCIENCES v. OXFORD NANOPORE TECHNOLOGIES
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`them trying to use the claim 1 method, including adding
`everything, if they had access to the Akeson grant, . . .
`would have been able to use the invention[,] . . . [t]o be able
`to successfully perform the method . . . of the ’400 and ’323
`[patents].” J.A. 1480 (Tr. 1133:1–9).
`The jury’s task was not to view one portion of Dr. Gold-
`man’s testimony in isolation, but to consider all the evi-
`dence, including any portion of the evidence that might
`clarify how to understand other portions. And there was
`substantial evidence that supported non-enablement. Dr.
`Goldman himself testified that the asserted claims of the
`’400 and ’323 patents lack enablement because of the re-
`quired element of determining “N” (how many nucleotides
`affect the current measurement during transit of a nucleic
`acid through the nanopore). J.A. 1475 (Tr. 1113:1–23).
`Even aside from the “N” claim limitation, the jury had
`substantial evidence of non-enablement of the full claim
`scope. For example, Dr. Akeson testified that his research,
`leading to the “Akeson grant,” was limited to “DNA hair-
`pin[s],” see J.A. 1406–07 (Tr. 934:17–935:16); J.A. 1405 (Tr.
`930:1–13), and that the first successful nanopore sequenc-
`ing of biological DNA molecules, to his knowledge, did not
`occur until 2011, see J.A. 1408 (Tr. 940:3–941:12); J.A. 1421
`(Tr. 992:9–17); and there is no indication, or argument by
`PacBio, that the 2011 success was made possible by the dis-
`closure in the ’400 and ’323 patents, see Everlight Elecs.,
`896 F.3d at 1363–64. Another of Oxford’s witnesses, Dr.
`James Clarke, testified that “nobody was” able to use na-
`nopore sequencing to sequence biological DNA until 2011.
`J.A. 1423 (Tr. 1001:23–1002:4); see also J.A. 1293 (Tr.
`674:2–6) (Dr. Willcocks); J.A. 1491–92 (Tr. 1180:25–
`1182:3) (Dr. Ha). There also was evidence that, when Ox-
`ford announced its success in 2012 at a large meeting of
`scientific professionals in the field, three years after the
`priority date of the patents at issue here, the audience of
`700 reacted in a way that suggests that the advance
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`PACIFIC BIOSCIENCES v. OXFORD NANOPORE TECHNOLOGIES 15
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`regarding nanopore sequencing with biological DNA was a
`major one. See J.A. 1409 (Tr. 943:1–944:14).
`We therefore conclude that there was ample evidence
`to support a finding that, before the 2009 priority date of
`the ’400 and ’323 patents, relevant artisans did not know
`how to perform nanopore sequencing for more than a nar-
`row range of the full scope of nucleic acids covered by the
`asserted claims. See Idenix, 941 F.3d at 1161 (“Where, as
`here, working examples are present but are ‘very narrow,
`despite the wide breadth of the claims at issue,’ this factor
`weighs against enablement.” (quoting Enzo Biochem, Inc.
`v. Calgene, Inc., 188 F.3d 1362, 1374 (Fed. Cir. 1999))); cf.
`Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil
`Co., 308 F.3d 1167, 1186 n.9 (Fed. Cir. 2002).
`Notably, PacBio had no evidence of actual reduction to
`practice of its own that would undermine Oxford’s evidence
`of non-enablement. As PacBio acknowledged, its reduction
`to practice was constructive only, i.e., took the form of its
`description in patent applications, without any accompany-
`ing real-world reduction to practice. See Oral Arg. 0:35–
`0:55. The jury heard from named inventor Dr. Turner that
`PacBio never performed nanopore sequencing in 2009, J.A.
`1104 (Tr. 244:10–15), and also heard stipulations of uncon-
`tested facts that PacBio had never performed the claimed
`methods, J.A. 1501 (Tr. 1217:7–1219:6); J.A. 5013–14. The
`jury had evidence, as well, that conveyed an intent by Pac-
`Bio to “tangle . . . up” and “fool” competitors with its pa-
`tents, language that might be understood to point away
`from PacBio’s having achieved an enabled method. J.A.
`1989; J.A. 1105 (Tr. 247:12–13).
`Viewing the facts most favorably to Oxford, we think
`that the record supports the legal conclusion that the dis-
`closures of the ’400 and ’323 patents, even when combined
`with knowledge of relevant artisans, required undue exper-
`imentation to enable the full scope of the relevant claims.
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`PACIFIC BIOSCIENCES v. OXFORD NANOPORE TECHNOLOGIES
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`B
`We review a decision denying a motion for a new trial
`for abuse of discretion, following the law of the regional cir-
`cuit, here, the Third Circuit. See Vectura Ltd. v Glax-
`oSmithKline LLC, 981 F.3d 1030, 1035 (Fed. Cir. 2020); see
`also Jester v. Hutt, 937 F.3d 233, 238 (3d Cir. 2019). “Un-
`der Third Circuit law, a district court should grant a new
`trial only if the jury’s verdict is against the great weight of
`evidence and either is a miscarriage of justice or cries out
`to be overturned.” Vectura, 981 F.3d at 1035; Leonard v.
`Stemtech Int’l Inc., 834 F.3d 376, 386 (3d Cir. 2016). The
`district court has broad discretion in not setting the verdict
`aside. Leonard, 834 F.3d at 386.
`1
`PacBio first seeks a new trial based on the jury’s ver-
`dict that the asserted claims are invalid for lack of enable-
`ment. See PacBio Opening Br. 42. PacBio’s two-sentence
`argument summarily asserts, as a basis for a new trial,
`that Dr. Goldman “offered only ‘general and vague’ state-
`ments regarding enablement” and “admitted that” he could
`not recall specific examples showing a lack of enablement.
`Id. For the reasons explained above, Dr. Goldman’s testi-
`mony does not stand alone, and the jury could reasonably
`rely on the evidence as a whole to determine that the claims
`at issue were not enabled. We draw no different conclusion
`when asking if the district court abused its discretion in
`deeming the evidence sufficient for purposes of the new-
`trial standard.
`
`2
`PacBio also argues that a new trial is necessary based
`on Oxford’s references to COVID-19 and the possi