- Long-time patent prosecution client turns to Mintz to protect its exclusive patent rights
- Mintz team secures complete victory at ITC in its first life sciences case in the venue
- Glycosyn patent ruled valid and infringed, and limited exclusion order recommended by Administrative Law Judge
Mintz has long represented Glycosyn as patent counsel, helping its founders develop a strong portfolio protecting their innovations in human milk science, specifically biosynthesis of human milk oligosaccharides in engineered bacteria. The company’s mission is to use their patented technology to develop products to enhance infant and child health worldwide. In recent years, it became clear that Jennewein Biotechnologie GmbH, a large global competitor, was infringing patented technology at the core of Glycosyn’s portfolio.
Glycosyn turned to Mintz to help it devise and implement a strategy to stop the infringing activity.
On March 5, 2018, Glycosyn filed a complaint against Jennewein for patent infringement in the District of Massachusetts, and on April 2 Glycosyn filed a parallel action at the International Trade Commission (ITC). The ITC is a forum that has an exceptionally quick path to resolution as well as the power to issue an exclusion order, and can lead to an exclusion order, which bans importation into the United States of any infringing product. These complaints alleged unlawful and unauthorized importation and production and/or manufacture of 2'-fucosyllactose oligosaccharides that directly infringe one or more claims of Glycosyn's patents. The District Court case was stayed pending results of the ITC investigation. The week of May 14, 2019, the ITC investigation proceeded to an oral hearing.
The result of the ITC case was vindication for Glycosyn. The Administrative Law Judge issued an Initial Determination finding that Jennewein had infringed Glycosyn’s patent rights, and that the patent was neither invalid nor unenforceable. (The Mintz team also successfully helped Glycosyn beat back a separate patent validity challenge brought by Jennewein in the Patent Office via a so-called “Post-Grant Review” petition.) The Judge further recommended issuing a limited exclusion order issue, including a certification provision with heightened requirements, “wherein said certification provision is required to state with particularity the grounds of non-infringement of the imported oligosaccharide and be accompanied by sufficient corroborating evidence of the type provided in this investigation.”
For additional details about this case, see the press release.