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Poster Presentation Tied To Business Objectives Serves As Evidence Of Infringement Of Patented Methods
03/11/2025On February 12, 2025, the United States District Court for the District of Delaware denied defendant Parse Biosciences’s (“Parse”) motions for summary judgment that: (i) Parse had never actually conducted any direct or indirect infringing activity with respect to the claims of certain asserted patents (the “Giresi Patent” family) or that any such infringement was de minimis and (ii) the claims of certain asserted patents (the “Brenner Patent” family) are invalid for lack of written description support and for failure to claim what the inventor “regarded as” their invention.
The Giresi Patent claims are generally directed to methods and compositions for genomic analysis, particularly involving the use of assays for transposase-accessible chromatin with sequencing (“ATAC-seq”) and tagmentation. The Brenner Patent claims are generally directed to methods for tagging and analyzing nucleic acids, with a particular focus on “dual tagging” techniques.
Plaintiffs opposed Parse’s motions by asserting that: (i) Parse directly infringed the Giresi Patents by using Plaintiffs’ data and protocols in experiments and presentations and indirectly infringed by advertising and offering to sell potential products using those data and protocols and (ii) the Brenner Patents are valid because their specifications—while focusing on a “reflex” tagging method—do describe the claimed “dual tagging” method.
The Giresi Patents:
Regarding the infringement of the Giresi Patents, the Court found that there was a genuine issue of material fact relating to Parse’s alleged infringement.
As to direct infringement, the Court noted that testimony from Parse’s scientists and CEO raised a possibility that Parse had used Plaintiff’s ATAC-seq protocol to run experiments and to collect data later unveiled at a conference poster presentation. The Court also pointed to testimony that revealed Parse employees has worked on an ATAC-seq protocol through Autumn 2023 and that Parse had received inquiries from customers regarding a Parse ATAC-seq product. Further, plaintiffs’ expert testified, after reviewing defendant’s poster and internal protocols, that defendant’s use of ATAC-seq protocols and experiments infringed the Giresi patents.
The Court also denied the defense of de minimis infringement because, although the alleged use was experimental, there was a genuine dispute as to whether that experimentation was non-commercial given, inter alia, Parse’s alleged creation and advertising of an infringing ATAC-seq product.
Likewise, as to indirect infringement, the Court found that there was a genuine issue of material fact. Although Parse characterized plaintiffs’ portrayal of the infringement as speculative regarding potential future conduct, maintaining that no Parse ATAC-seq product had ever existed and that Parse had no plans to release such a product, the Court noted the existence of the poster presentation, as well as an online article that indicated that Parse intended to launch an ATAC-seq kit. The Court found that, if proven, these facts would constitute concrete steps that would actively induce or contribute to infringement.
The Brenner Patents:
The Court also denied summary judgment with respect to the validity of the Brenner Patents due to a genuine issue of material fact.
The Court found credible plaintiffs’ assertion that the specification describes—in addition to the “reflex” tagging method—tags or combination of tags that can be used to differentiate polynucleotides in a sample (“multiplex identifiers” or “MIDs”). The Court found convincing plaintiffs’ expert report, which opined that these MIDs encompass and correlate to the claimed dual tagging methods and that a person of skill in the art would regard MIDs and the dual tagging they allow as the claimed invention.
