UPDATE (Adds EnzymeWorks response) — Protein engineering company Codexis, Inc said it secured a federal court order awarding it summary judgment on 10 claims of patent infringement it brought in a lawsuit against Suzhou, China-based EnzymeWorks, Inc. and its San Diego-based affiliate, also called EnzymeWorks, Inc.
“The court’s order establishes EnzymeWorks’ uncontested infringement of 10 of Codexis’ patents and eliminates any need for a trial on those issues,” said Codexis.
“The 10 Codexis patents cover dozens of engineered enzymes that have wide industrial applicability.
“In the lawsuit, filed in February 2016 in United States District Court for the Northern District of California in San Francisco, Codexis sued EnzymeWorks and EnzymeWorks founder Junhua ‘Alex’ Tao for willful infringement of 10 biocatalysis patents and also for trade secret misappropriation, breach of contract, interference with business relationships and unfair competition.
“After nearly 18 months of legal process, EnzymeWorks never contested the infringement charges or challenged the validity of Codexis’ patents.
“This set the stage for District Judge William H. Orrick awarding Codexis summary judgment of patent infringement.”
Codexis said this partial summary judgment order in favor of Codexis is a milestone in the lawsuit, but that additional disputes remain to be resolved at a jury trial.
Codexis CEO John Nicole said: “Codexis is pleased to finally have some closure about EnzymeWorks’ blatant infringement of our patents and disrespect for U.S. patent laws.
“Like our customers and shareholders, Codexis relies on intellectual property rights, and we are grateful that the legal process vindicated our claims and protects our innovations.”
EnzymeWorks and Alex Tao later issued the following statement: “As the discovery is approaching the end in the case, Codexis has not provided any valid evidence to support its claim that EnzymeWorks or Alex Tao stole its trade secrets on plasmids or breached any contracts.
“EnzymeWorks expects to recover a substantial amount of attorney fees from Codexis for its baseless misappropriation claims.
“Dr. Tao expects to recover both cost of suits and attorney fees from Codexis for its meritless claims against him individually.
“As for the patent infringement claim, because the actual sales of the accused enzyme kits are only a small percentage of the potential legal expenses for defending such claims, EnzymeWorks has chosen not to contest the patent infringement claims and made an offer of judgment.
“Accordingly, EnzymeWorks has recently entered a stipulation for a summary judgment on the patent infringement claim.
“There is, however, no evidence for willful infringement.
“Because its offer of judgment is more than sufficient to cover the damage awards for the patent infringement claims, EnzymeWorks is expected to recover cost of suits from Codexis for the patent infringement claims.
“Both EnzymeWorks and Dr. Tao may also sue Codexis and its CEO John Nicols for defamation and trade libel for their improper press releases.”