IBO’s second installment of its annual review of selected new patent infringement lawsuits involving lab instrument and product companies details new and settled litigation, and provides an update on a suit reported on earlier this year.

New Suits

A recent acquisition has led Agilent Technologies into a new patent infringement suit. In August, Agilent purchased ProZyme (see IBO 6/30/18), the maker of the GlyX and GlykoPrep products for glycan analysis. Agilent now offers the Instant PC glycan reagents based on the same glycan anlaysis technology. Last month, Waters filed suit in US District Court in Delaware (Wilmington) against Agilent for infringement of US Patent No. 9,658,234 (Method for Analysis of Compounds with Amino Group and Analytical Reagent Therefor), stating that the Instant PC glycan reagents infringe the IP used in its GlycoWorks RapiFluor-MS N-Glycan Kit. Waters initially licensed rights to the patented technology from Ajinomoto and acquired the IP this year. Waters claims willful infringement, and requests preliminary and permanent injunctions as well as royalties on product sales.

According to the complaint, “The claims of the ʼ234 Patent cover specific carbamate compounds to label primary and secondary amines within another compound. The label assists with the subsequent detection and characterization of the labeled compound. The claims of the ʼ234 Patent also cover methods of labeling and methods of analyzing the labeled compound including by way of mass spectrometry.”

Dismissals 

In another chapter of the companies’ litigation history, Agilent and Waters have settled a previous suit. In March, the companies stipulated to dismiss Waters’ 2011 patent infringement suit against Aurora SFC Systems and Agilent (see IBO 10/31/11) involving SFC technology. The case was dismissed with prejudice.

Another case involving Agilent has also settled. Agilent was named a defendant in a case brought in May in US District Court in Delaware by Thermo Fisher Scientific. The plaintiff alleged infringement by Agilent’s 8800 ICP-QQQ MS and subsequent related systems of U.S. Patent Nos.: RE45,386 (reissue of 7,202,470) (Means for Removing Unwanted Ions from an Ion Transport System and Mass Spectrometer); 7,230,232 (Means for Removing Unwanted Ions from an Ion Transport System and Mass Spectrometer); and RE45,553 (reissue of 7,211,788) (Mass Spectrometer and Mass Filters Therefor). The case was dismissed in October following a stipulation for dismissal with prejudice by the parties.

Also settled quickly was a suit filed in July by Alfano Optical Tomography against Bruker in the Northern District of California. Alfano Optical Tomography, which is managed by patent firm General Patent, claimed infringement of US Patent No. 6,208,886 (Non-Linear Optical Tomography of Turbid Media) by Bruker microscopes designed to generate 3D tomographic maps, such as the Ultima multiphoton microscopes. Last month, the court dismissed the action without prejudice following a request by the plaintiff.

Resolving a suit filed in 2016 in the US District Court Northern District of California, the Regents of the University of California have settled with Genia Technologies and its cofounder Roger Jinteh Arrigo Chen. The suit involved four patent applications: US Patent Nos. 14/056,636, 14/300,453, 14/919,315, 15/087,734 and 15/162,225 (all entitled Compositions, Devices, Systems and Methods for Using a Nanopore), as well as several abandoned patent applications. Genia Technologies was acquired by Roche in 2014 (see IBO 6/30/14). Dr. Chen worked at the University of California Santa Cruz, where the patented technology was developed. The allegations included breach of contract. In July, the court dismissed the suit with prejudice upon the request of both parties, citing a settlement agreement.

In another NGS-related suit, in July, NuGEN Technologies settled its suit filed in January in Northern California District Court against KeyGene Technologies. NuGEN’s suit requested a declaratory judgment of non-infringement of three patents to protect it from future litigation. The suit involved US Patent Nos. 9,702,004 (Method for High-throughput AFLP-based Polymorphism Detection); 9,745,627 (High Throughput Screening of Populations Carrying Naturally Occurring Mutations); and 9,896,721 (Strategies for High Throughput Identification and Detection of Polymorphisms). According to NuGen’s complaint, KeyGene had approached the company alleging infringement of KeyGene’s patent portfolio by NuGEN’s Ovation Target Enrichment System and Allegro Targeted Genotyping products, among others. The parties jointly stipulated to dismiss the case with prejudice.

Also settled was Scripps Research Institute’s 2016 patent infringement suit against Illumina (see IBO 5/15/16). In May, the court granted Illumina’s joint motion and stipulation for a final judgment that Illumina was entitled to a judgment of non-infringement as a matter of law. Scripps has filed an appeal with the US Court of Appeals for the Federal Circuit.

Updates

In a patent infringement suit brought by the Regents of the University of California and Becton, Dickinson filed last year (see IBO 5/31/18), the US District Court of the Southern District of California has granted defendants Affymetrix and Life Technologies’ (Thermo Fisher Scientific) summary motion for non-infringement of 1 of the 3 patents under dispute. The court dismissed the claims concerning US Patent No. 9,085,799 (Methods and Compositions for Detection and Analysis of Polynaucleotides Using Light Harvesting Multichromophores).