By Memorandum Order entered by The Honorable Leonard P. Stark in Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. et al., Civil Action No. 17-275-LPS (D.Del. June 12, 2019), the Court granted Plaintiff’s motion for reconsideration of the portion of the Court’s Claim Construction Order that determined that the term “kinetic steps” in claim 1 of U.S. Patent No. 9,678,056 is indefinite. Initially, the Court concluded that “claim 1 ‘requires that the enzymatic reaction be able to be characterized in terms of a precise number of steps,’ but that a POSA would not ‘be able to determine the number of kinetic steps and each step’s rate constant . . . with reasonable certainty.’” Id. at *2-3. In support of its motion for reconsideration, Plaintiff contended that reargument was appropriate because the Court misapprehended the claim language, failed to consider an expert’s opinions and defendant’s IPR petition, and lacked the opportunity to consider a document newly-produced by Defendant. Id. at *3.
After review of the evidence, the Court concluded that it had misapprehended certain factual arguments and would benefit from the presentation of additional evidence before making a final determination on indefiniteness. Id. Thus, in granting the motion for reconsideration, the Court concluded that further proceedings were necessary to resolve the indefiniteness dispute because it was no longer persuaded that a POSA (person of ordinary skill in the art) must be able to determine the number of kinetic steps in a reaction as well as each step’s rate constant. Id. at *3-6.
A copy of the Memorandum Order is attached.