Invalidity Opinion Creates Fact Issue as to Specific Intent Needed for Indirect Infringement

The court denied plaintiff's motion for summary judgment of induced and contributory infringement because defendant had obtained an opinion letter indicating that one of plaintiff's automated nucleic acid-based targeting patents was invalid as obvious. "[Defendant] argues that this opinion letter and subsequent legal opinions obtained are sufficient to create a triable issue of fact on whether [it] had the requisite specific intent to encourage another’s infringement. . . . The parties acknowledge the Federal Circuit has not addressed this issue. . . . Rather than find that the opinion letter is entirely excluded from considerations of infringement or that it is dispositive in favor of [defendant], the Court finds the opinion letter is sufficient to create a triable issue of fact."

Gen-Probe Incorporated v. Becton Dickinson and Company, 3-09-cv-02319 (CASD September 28, 2012, Order) (Benitez, J.).