Case 1:12-cv-00274-LPS Document 74 Filed 05/06/13 Page 1 of 8 PageID #: 795
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 12-cv-274-LPS
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`JURY TRIAL DEMANDED
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`ENZO LIFE SCIENCES, INC.
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`Plaintiff,
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`Defendants.
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`v.
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`ABBOTT LABORATORIES; and
`ABBOTT MOLECULAR INC.
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`SECOND AMENDED COMPLAINT
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`Plaintiff Enzo Life Sciences, Inc. (“Enzo”), for its Second Amended Complaint
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`against Defendants Abbott Laboratories (“Abbott Labs”) and Abbott Molecular Inc. (“Abbott
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`Molecular”) (collectively “Abbott”), hereby alleges as follows:
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`PARTIES
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`1.
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`Plaintiff Enzo is a New York corporation with its principal place of business at 10
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`Executive Boulevard, Farmingdale, NY 11735.
`2.
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`Defendant Abbott Labs is an Illinois corporation with its principal place of
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`business at 100 Abbott Park Road, Abbott Park, Illinois 60064.
`3.
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`Defendant Abbott Molecular is a Delaware corporation with its principal place of
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`business at 1300 E. Touhy Avenue, Des Plaines, IL 60018. Abbott Molecular is a wholly
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`owned subsidiary of Abbott Labs.
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`NATURE OF THE ACTION
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`4.
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`This is a civil action for infringement of United States Patent Nos. 6,992,180 (“the
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`’180 Patent”), 7,064,197 (“the ’197 Patent”), and 8,097,405 (“the ’405 Patent”) (collectively,
`“the Patents-In-Suit”) under the Patent Laws of the United States, 35 U.S.C. § 1 et seq. 
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`Case 1:12-cv-00274-LPS Document 74 Filed 05/06/13 Page 2 of 8 PageID #: 796
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`JURISDICTION AND VENUE 
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`5.
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`This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a).
`6.
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`This Court has personal jurisdiction over Abbott because, among other things,
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`Abbott has committed, aided, abetted, contributed to, and/or participated in the commission of
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`patent infringement in this judicial district and elsewhere that led to foreseeable harm and injury
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`to Enzo. Moreover, Abbott Molecular is a Delaware corporation which, having availed itself of
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`Delaware’s corporate laws, is subject to personal jurisdiction in Delaware.
`7.
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`This Court also has personal jurisdiction over Abbott because, among other
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`things, Abbott has established minimum contacts within the forum such that the exercise of
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`jurisdiction over Abbott will not offend traditional notions of fair play and substantial justice.
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`Moreover, Abbott has placed products that practice the claimed inventions of the Patents-In-Suit
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`into the stream of commerce with the reasonable expectation and/or knowledge that purchasers
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`and users of such products were located within this District. Abbott has sold, advertised,
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`marketed, and distributed products in this District that practice the claimed inventions of the
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`Patents-In-Suit.
`8.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391 and 1400(b).
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`The Patents-In-Suit
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`9.
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`United States Patent No. 6,992,180, entitled “Oligo- Or Polynucleotides
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`Comprising Phosphate-Moiety Labeled Nucleotides,” was duly and legally issued by the United
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`States Patent and Trademark Office on January 31, 2006. A copy of the ’180 Patent is attached
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`hereto as Exhibit A.
`10.
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`Enzo is the assignee of the ’180 Patent and has the right to sue and recover
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`damages for any current or past infringement of the ’180 Patent.
`11.
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`United States Patent No. 7,064,197, entitled “System, Array and Non-Porous
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`Solid Support Comprising Fixed or Immobilized Nucleic Acids,” was duly and legally issued by
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`the United States Patent and Trademark Office on June 20, 2006. A copy of the ’197 Patent is
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`attached hereto as Exhibit B.
`12.
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`Enzo is the assignee of the ’197 Patent and has the right to sue and recover
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`damages for any current or past infringement of the ’197 Patent.
`13.
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`United States Patent No. 8,097,405, entitled “Nucleic Acid Sequencing Processes
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`Using Non-Radioactive Detectable Modified or Labeled Nucleotide Analogs, and Other
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`Processes for Nucleic Acid Detection and Chromosomal Characterization Using Such Non-
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`Radioactive Detectable Modified or Labeled Nucleotides or Nucleotide Analogs,” was duly and
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`legally issued by the United States Patent and Trademark Office on January 17, 2012. A copy of
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`the ’405 Patent is attached hereto as Exhibit C.
`14.
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`Enzo is the assignee of the ’405 Patent and has the right to sue and recover
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`damages for any current or past infringement of the ’405 Patent.
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`COUNT I
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`Infringement Of The ’180 Patent
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`15.
`16.
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`Paragraphs 1 through 14 are incorporated by reference as if fully stated herein.
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`Abbott, either alone or in conjunction with others, has infringed and continues to
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`infringe, one or more claims of the ’180 Patent under 35 U.S.C. § 271, either literally and/or
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`under the doctrine of equivalents, by making, using, offering to sell, selling and/or importing into
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`the United States certain nucleic acid probe products, including without limitation products
`involving TaqMan® probes, for example and without limitation, RealTime HBV assays, and any
`products as detailed in Enzo’s Initial Disclosures of Accused Products and Asserted Patents and
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`supplements thereto (collectively, “Nucleic Acid Probe Products”).
`17.
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`Abbott has had knowledge of and notice of the ’180 Patent and its infringement
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`since at least March 2006, through negotiations for a Cross-License Agreement between Enzo
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`and Abbott concerning and expressly naming the ’180 patent.
`18.
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`Abbott has induced infringement, and continues to induce infringement, of one or
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`more claims of the ’180 Patent under 35 U.S.C. § 271(b). Abbott actively, knowingly, and
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`intentionally induced, and continues to actively, knowingly, and intentionally induce,
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`infringement of the ’180 Patent by selling or otherwise supplying Nucleic Acid Probe Products;
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`with the knowledge and intent that third parties will use, sell, offer for sale, and/or import, the
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`Nucleic Acid Probe Products supplied by Abbott to infringe the ’180 Patent; and with the
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`knowledge and intent to encourage and facilitate the infringement through the dissemination of
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`the Nucleic Acid Probe Products and/or the creation and dissemination of promotional and
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`marketing materials, supporting materials, instructions, product manuals, and/or technical
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`information related to the Nucleic Acid Probe Products.
`19.
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`Enzo has been and continues to be damaged by Abbott’s infringement of the ’180
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`Patent.
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`20.
`21.
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`Abbott’s infringement of the ’180 Patent was, and continues to be, willful.
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`Abbott’s conduct in infringing the ’180 Patent renders this case exceptional
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`within the meaning of 35 U.S.C. § 285.
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`COUNT II
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`Infringement Of The ’197 Patent
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`22.
`23.
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`Paragraphs 1 through 21 are incorporated by reference as if fully stated herein.
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`Abbott, either alone or in conjunction with others, has infringed and continues to
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`infringe, one or more claims of the ’197 Patent under 35 U.S.C. § 271, either literally and/or
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`under the doctrine of equivalents, by making, using, offering to sell, selling and/or importing into
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`the United States certain nucleic acid array products, including without limitation products
`involving Bead Array technology, for example and without limitation xTAG® RVP, and xTAG®
`RVP FAST, and any products as detailed in Enzo’s Initial Disclosures of Accused Products and
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`Asserted Patents and supplements thereto (collectively, “Nucleic Acid Array Products”).
`24.
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`Abbott has had knowledge of and notice of the ’197 Patent and its infringement
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`since before April 26, 2007, through negotiations for a Cross-License Agreement between Enzo
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`and Abbott concerning and expressly naming the ’197 patent.
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`25.
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`Abbott has induced infringement, and continues to induce infringement, of one or
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`more claims of the ’197 Patent under 35 U.S.C. § 271(b). Abbott actively, knowingly, and
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`intentionally induced, and continues to actively, knowingly, and intentionally induce,
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`infringement of the ’197 Patent by selling or otherwise supplying Nucleic Acid Array Products;
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`with the knowledge and intent that third parties will use, sell, offer for sale, and/or import, the
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`Nucleic Acid Array Products supplied by Abbott to infringe the ’197 Patent; and with the
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`knowledge and intent to encourage and facilitate the infringement through the dissemination of
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`the Nucleic Acid Array Products and/or the creation and dissemination of promotional and
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`marketing materials, supporting materials, instructions, product manuals, and/or technical
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`information related to the Nucleic Acid Array Products.
`26.
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`Enzo has been and continues to be damaged by Abbott’s infringement of the ’197
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`Patent.
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`27.
`28.
`within the meaning of 35 U.S.C. § 285.
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`Abbott’s infringement of the ’197 Patent was, and continues to be, willful.
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`Abbott’s conduct in infringing the ’197 Patent renders this case exceptional
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`COUNT III
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`Infringement Of The ’405 Patent
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`29.
`30.
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`Paragraphs 1 through 28 are incorporated by reference as if fully stated herein.
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`Abbott, either alone or in conjunction with others, has infringed and continues to
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`infringe, one or more claims of the ’405 Patent under 35 U.S.C. § 271, either literally and/or
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`under the doctrine of equivalents, by making, using, offering to sell, selling and/or importing into
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`the United States certain DNA fluorescent in situ hybridization (FISH) probes, including without
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`limitation products involving AneuVysion Multicolor DNA Probes; UroVysion Bladder Cancer
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`Probes; CEP 8 SpectrumOrange Direct Label Fluorescent DNA Probes; CEP 8 SpectrumOrange
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`Direct Label Fluorescent DNA Probes; CEP 8 SpectrumOrange Direct Labeled Fluorescent
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`DNA Probes; CEP X SpectrumOrange/Y SpectrumGreen DNA Probes; Vysis CLL FISH
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`Probes; Vysis EGR1 FISH Probes; CEP Probes; Vysis ALK Break Apart FISH Probe; Vysis LSI
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`Case 1:12-cv-00274-LPS Document 74 Filed 05/06/13 Page 6 of 8 PageID #: 800
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`FISH Probes; FISH Microdeletion Probes; ToTelVysion Probes; TelVysion Probes; PathVysion
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`Her-2 DNA Probes (collectively “FISH Probe Products”).
`31.
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`Abbott has had knowledge of and notice of the ’405 Patent and its infringement
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`since at least January 2, 2013, through Enzo’s Answer and Counterclaims to Intervening-
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`Defendant’s Luminex Counterclaims in Enzo Life Sciences, Inc. v. Abbott Labs., Civ. A. No. 12-
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`cv-274-LPS (D. Del.) (D.I. 45) concerning the ’405 patent. Abbott had further knowledge of and
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`notice of the ’405 Patent and its infringement since at least January 18, 2013, through
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`communications between Enzo’s counsel and Abbott’s counsel in the above-referenced matter.
`32.
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`Abbott has induced infringement, and continues to induce infringement, of one or
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`more claims of the ’405 Patent under 35 U.S.C. § 271(b). Abbott actively, knowingly, and
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`intentionally induced, and continues to actively, knowingly, and intentionally induce,
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`infringement of the ’405 Patent by selling or otherwise supplying FISH Probe Products, with the
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`knowledge and intent that third parties will use, sell, offer for sale, and/or import, the FISH
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`Probe Products supplied by Abbott to infringe the ’405 Patent; and with the knowledge and
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`intent to encourage and facilitate the infringement through the dissemination of the FISH Probe
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`Products and/or the creation and dissemination of promotional and marketing materials,
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`supporting materials, instructions, product manuals, and/or technical information related to the
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`FISH Probe Products.
`33.
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`Enzo has been and continues to be damaged by Abbott’s infringement of the ’405
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`Patent.
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`34.
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`Abbott’s conduct in infringing the ’405 Patent renders this case exceptional
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`within the meaning of 35 U.S.C. § 285.
`PRAYER FOR RELIEF
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`WHEREFORE, Enzo respectfully requests that this Court enter judgment against Abbott
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`as follows:
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`A.
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`That Abbott has infringed the Patents-In-Suit;
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`Case 1:12-cv-00274-LPS Document 74 Filed 05/06/13 Page 7 of 8 PageID #: 801
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`B.
`C.
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`That Abbott’s infringement of the ’180 Patent and ’197 Patent has been willful;
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`That Enzo be awarded damages adequate to compensate it for Abbott’s past
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`infringement and any continuing or future infringement up until the date such judgment is
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`entered, including interest, costs, and disbursements as justified under 35 U.S.C. § 284 and, if
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`necessary to adequately compensate Enzo for Abbott’s infringement, an accounting, and that
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`such damages be trebled based on Abbott’s willful infringement;
`D.
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`That this case be declared an exceptional case within the meaning of 35 U.S.C. §
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`285;
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`E.
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`A preliminary and permanent injunction preventing Abbott, and those in active
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`concert or participation with Abbott, from directly and/or indirectly infringing the Patents-In-
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`Suit;
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`F.
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`A judgment requiring that, in the event a permanent injunction preventing future
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`acts of infringement is not granted, Enzo be awarded a compulsory ongoing licensing fee; and
`G.
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`That Enzo be awarded such other and further relief at law or equity as this Court
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`deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Plaintiff Enzo hereby demands a trial by jury on all claims and issues so triable.
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`Dated: May 6, 2013
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`Respectfully submitted,
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`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`FARNAN LLP
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`(302) 777-0301
`bfarnan@farnanlaw.com
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`Case 1:12-cv-00274-LPS Document 74 Filed 05/06/13 Page 8 of 8 PageID #: 802
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`Counsel for Plaintiff
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`Of Counsel:
`John M. Desmarais
`Michael P. Stadnick
`Xiao Li
`Joseph C. Akalski
`Lauren M. Nowierski
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`(212) 351-3400 (Tel)
`(212) 351-3401 (Fax)
`jdesmarais@desmaraisllp.com
`mstadnick@desmaraisllp.com
`xli@desmaraisllp.com
`jakalski@desmaraisllp.com
`lnowierski@desmaraisllp.com
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