In this issue, IBO presents its second look this year at patent infringement litigation involving lab instrument and product companies.

New Suits

Legal activity has heightened between Illumina and sequencing services provider Complete Genomics. In June, Illumina filed a second patent infringement suit against publicly held Complete Genomics, which is set to be acquired by BGI for $117.6 million. The suit filed in the US District Court for the Southern District of California claims that the Complete Genomics Analysis Platform, particularly its Combinatorial Probe-Anchor Ligation read technology, infringes an Illumina patent (see table, page 3). In a July answer, Complete Genomics denied the claims and asserted counterclaims. A summary judgment was issued this month in the companies’ first suit (see page 2).

Also initiating new litigation against a previous defendant is Life Technologies. The company and the Regents of the University of California have filed a second suit against eBioscience in the US District Court in the Southern District of California (see table, page 3) (see IBO 4/30/11). Both suits are related to patents covering nanocrystal probes. EBiosciences was acquired by Affymetrix this summer (see IBO 6/30/12). The new suit alleges infringement of patents that were issued in December 2011 by eBioscience’s eFluor Nanocrystals products.

Life Technologies is the defendant in a case brought earlier this year in the US District Court for the Middle District of North Carolina by Esoterix Genetic Laboratories, a Laboratory Corporation of America company (see table). The plaintiff alleges infringement by Life Technologies’ Personal Genome Machine, Ion Proton Sequencer, OpenArray system, and cancer panels used with the PGM and Ion Proton systems. Esoterix stated in its complaint that it obtained US Patent No. 5,670,325 from Exact Sciences. In July, Life Technologies filed a motion to dismiss for failure to state a claim.

This month, Esoterix brought a second suit against Life Technologies, with and John Hopkins University as a coplaintiff, in the same court (see table). The complaint alleges infringement of three patents by Life Technologies’ sequencers, OpenArray system, cancer panels, software and reagents due to their use “in methods for detecting ratios of genetic sequences or determine allelic imbalances.” The patents are exclusively licensed to Esoterix.

Korean firm Panagene and the inventors filed a patent infringement suit involving Peptide Nucleic Acid oligomers in May in the US District Court for the Eastern District of Texas against Bio-Synthesis (see table). The patents are exclusively licensed to Panagene. In its August answer, Bio-Synthesis denied the allegations and alleged counterclaims.

Appealed

In September, the US District Court of Massachusetts dismissed MIT and E8 Pharmaceuticals’ 2008 suit in the US District Court of Massachusetts against Affymetrix (see IBO 7/15/08) and Navigenics, which was added as a defendant in 2009. E8 was dismissed from the case in 2010 for lack of standing. The suit alleged infringement by Affymetrix’s GeneChip products. Following a claims construction hearing in September, MIT conceded that, under the court’s construction of the terms, the patents were not infringed. The parties stipulated to non-infringement of the asserted claims and entry of final judgment without prejudice (the matter can be litigated again). MIT filed an appeal in October.

Settled

Fluxion Biosciences and Cellectricon announced this month a settlement of Fluxion and Gyros’ 2009 suit against Cellectricon for infringement of patents related to cellular analysis using microfluidics (IBO 4/30/10). The original suit involved four patents, but one patent was severed from the case (see IBO 4/30/12). Under the settlement agreement, the firms will cross-license their respective patents.

Following a settlement agreement, Affymetrix and Illumina stipulated in May to dismiss a suit against Illumina concerning correction of inventorship. Affymetrix and Gregory Kirk had filed suit against Illumina in 2011 (see IBO 4/30/11).

Sequencing firm Helicos Biosciences has seemingly hit a dead end in its legal efforts. The company initiated patent infringement suits against several competitors, starting in 2010, when it alleged infringement by Pacific Biosciences of four patents (see IBO 9/30/10). Subsequently, it added Illumina to the suit, alleging infringement of two of the patents, as well as an additional patent. It then named Life Technologies a defendant, alleging its infringement of three of the patents (see IBO 10/31/10). Arizona Science and Technology Enterprises, a licensee of two of the patents, joined Helicos as a co-plaintiff in 2011.

In May, the plaintiffs and Pacific Biosciences stipulated to a dismissal of all claims. Helicos stated that, under the agreement, Pacific Bisociences could operate “within a limited field of use covering Pacific Biosciences’ current products only.” The settlement also involved a financial agreement. Pacific Biosciences also agreed not to challenge Helicos’ patents. Then, in June, the plaintiffs and Life Technologies stipulated to dismiss all claims with prejudice and all affirmative defenses and counterclaims without prejudice.

Helicos and Illumina stipulated in February and June to dismissal of the claims with prejudice in regard to US Patent Nos. 7,169,560 and 7,037,687, respectively. This left Illumina’s infringement of US Patent No. 7, 593,109 as the sole remaining claim. In August, the US District Court in the District of Delaware granted Illumina’s motion for summary judgment of invalidity based on inadequate written description, but denied its motions for summary judgment of non-infringement and invalidity on the basis of anticipation. Following the ruling, the parties wrote to the court requesting that the case be closed without waving claims, defenses or arguments and without prejudice to their rights on appeal. The court entered a final judgment in Illumina’s favor earlier this month.

Another case that came to a close for Illumina was its 2010 case against LadaTech (see IBO 4/30/10). Earlier this year, a jury found that certain Illumina products infringed a LadaTech patent (see IBO 3/15/12). Illumina filed a motion for judgment as a matter of law of non-infringement or in the alternative for a new trial. But, in July, the parties stipulated to the dismissal of the case with prejudice.

After three years, Life Technologies has settled all its claims in a case initially brought against Biosearch Technologies (see IBO 4/30/11) and to which it later added Eurofins MWG Operon and the Midland Certified Reagent Company as defendants. This month, the court dismissed Life Technologies and Eurofins’ claims without prejudice. Last month, Life Technologies and Biosearch stipulated to a dismissal of their claims without prejudice. That followed the dismissal of the claims against Bio-Synthesis with prejudice. The claims against Midland were dismissed in 2010. Also settled was Catalyst Assets’ case against Life Technologies, which was voluntarily dismissed in June (see IBO 10/31/11). The plaintiff’s claims were dismissed with prejudice, and defendant’s counterclaims were dismissed without prejudice.

In June, PerkinElmer dismissed with prejudice its claims against Waters in its suit regarding MS technology (see IBO 3/31/12). In its second-quarter SEC filing, Waters disclosed that it made a $3 million payment in June to settle a patent infringement complaint. Remaining defendant, Agilent Technologies, requested in July re-examinations by the US Patent Office of the two patents at dispute.

Also settling were X-Ray Optical Systems (XOS) and Innov-X Systems’ suit concerning X-ray fluorescence technology (see IBO 4/30/11). The case was dismissed in July.

In May, the US District Court for the Northern District of California granted Thermo Fisher Scientific’s motion for summary judgment for non-infringement in Spectros’ 2009 patent infringement case against the company involving Thermo’s NanoDrop 3300 spectrometer (see IBO 5/31/09). Spectros appealed the decision in July but dismissed its complaint last month.

 Selected New US Patent Infringement Cases Among Instrument and Lab Product Companies

 Plaintiff:     Esoterix Genetic Laboratories Life Technologies

 Defendant:     Applied Biosystems, Ion Torrent Systems

 US Patent No.: 5,670,325

                5,882,856

                6,207,372

 Patent Title:  Method for the Detection of Clonal Populations of Transformed Cells in a Genomically Heterogeneous Cellular

                Sample,  Universal Primer Sequence for Multiplex DNA Amplification 

 Case Filed:    4/26/2012

   

 Plaintiff:     Panagene, Dorte Buchardt, Michael Egholm, Peter E. Nielsen, Rolf H. Berg

 Defendant:     Bio-Synthesis

 US Patent No.: 6,395,474

                7,378,485

 Patent Title:  Peptide Nucleic Acids,  Peptide Nucleic Acids with Polyamide-Containing Backbones

 Case Filed:    5/17/2012

 Plaintiff:     Illumina

 Defendant:     Complete Genomics 

 US Patent No.: 8,192,930

 Patent Title:  Method for Sequencing a Polynucleotide Template

 Case Filed:    6/15/2012

     

 Plaintiff:     Life Technologies, Molecular Probes, Regents of the University of California

 Defendant:     eBioscience

 US Patent No.: 8,071,359

                8,071,360

                8,071,361

 Patent Title:  Semiconductor Nanocrystal Probes for Biological Applications and Process for Making and Using Such Probes

 Case Filed:    8/30/2012

 Plaintiff:     Esoterix Genetic Laboratories, The John Hopkins University 

 Defendant:     Life Technologies, Applied Biosystems, Ion Torrent Systems 

 US Patent No.: 6,440,706

                7,824,889

                7,915,015

 Patent Title:  Digital Amplification

 Case Filed:    10/31/2012