Agilent and PerkinElmer Dismiss Case
As summarized by the court, US Patent No. 5,581,080 “describes the method by which the ESI technology works,” and US Patent No. 5,686,726 “describes the composition of the matter created during the ESI process.” Both patents are the subject of US Patent & Trademarket Office reexamination proceedings. Waters was the defendant in a similar action by PerkinElmer that was later dismissed (see IBO 10/31/12).
Boston, MA 11/10/14; Boston, MA 11/12/14—The US District Court for Massachusetts has dismissed PerkinElmer’s 2012 suit against Agilent Technologies (see IBO 3/31/12) with prejudice and without costs, after a joint stipulation of dismissal by the parties. The complaint alleged patent infringement of two MS-related patents by Agilent and breach of a sublicense agreement due to failure to make royalty payments. In July 2013, the parties focused and narrowed the case to breach-of-contract and to damages recorded before July 2011. This September, the Court ruled on three motions for summary judgment. It denied two Agilent motions for partial summary judgments and dismissed Agilent’s counterclaims. Ruling on PerkinElmer’s motions, the Court allowed for summary judgment for Agilent’s failure to pay royalties between 2009 and 2011, but only for triple-quadrupole instruments, not for other instruments, such as the Chip Cube, and software, stating that the triple-quadrupole MS was the only product “capable of infringement.”
