In this article, IBO presents the second report in its biannual review of new patent infringements suits involving analytical instrument and lab product companies.

New Cases

In May, the University of Pittsburgh filed suit in the US District for the Western District of Pennsylvania against PerkinElmer, alleging infringement of five patents (see table below), which are credited to Professor Joel S. Greenberger of the University of Pittsburgh School of Medicine. The filing states that the patents “are generally related to an integrated system for incubating cells in a dynamically controlled environment and automatically determining the state of the incubated cells.”

The alleged infringing products include PerkinElmer’s Opera, Operetta and Opera Phenix high-content screening and imaging systems, and related software and automation systems. Among the complaint’s requests are compensatory damages as well as treble damages due to willfulness. In PerkinElmer’s answer to the complaint, the company denied the allegations and filed seven affirmative defenses, and asserted counterclaims of invalidity and noninfringement

In the US District Court for the District of Delaware, Advanced Microscopy, a division of WiLAN, an intellectual property firm, filed separate suits against Carl Zeiss, Leica Microsystems, Nikon and Olympus alleging patent infringement (see table below). The suits relate to Advanced Microscopy’s April acquisition of intellectual property for enhanced imaging from a research institution. Among the complaints’ requests are pre- and postjudgment interest.

In their answers to the complaint, the companies stated affirmative defenses. Carl Zeiss filed counterclaims. Two companies have already announced settlement agreements. In September, WiLAN announced patent license agreements with Nikon and Olympus. Subsequently, these two cases were dismissed with prejudice (a case for the same claim cannot be brought again).

Settlements

Enzo Biochem announced earlier this month a $10 million settlement with Affymetrix of its 2012 suit against Affymetrix involving US Patent No. 7,064,197 related to microarray technology (see IBO 4/30/12). Suits involving the same patent against other defendants, including Agilent Technologies and Illumina, are still before the court.

In May, Enzo Biochem’s 2003 suit against Molecular Probes (Life Technologies/Thermo Fisher Scientific) and Yale University (see IBO 12/15/13) was dismissed with prejudice by the court following the filing of a joint stipulation of dismissal.

In September, Esoterix Genetic Laboratories and Johns Hopkins University settled their 2012 suit against Life Technologies/Thermo for sequencing-related patents (see IBO 10/31/12). The court dismissed the case with prejudice following the parties’ request. Another 2012 suit involving sequencing technology brought by Esoterix against Life was also dismissed this September with prejudice (see IBO 10/31/12).

Another long running case to come to a close was Scientific Plastic Products’ (SPP) 2009 suit against Biotage and Merck & Co. involving flash chromatography technology. Biotage announced in June that the three SPP patents that were the focus of the suit were the subject of a reexamination by the US Patent and Trademark Office, which rejected the claims last year. In June, the US Supreme Court denied SPP’s petition for review. In July, the case was voluntarily dismissed. The claims were dismissed with prejudice, and the counterclaims were dismissed without prejudice. The patents that are the subject of a 2012 suit by SPP against Biotage (see IBO 4/30/12) are currently the subject of a US PTO reexamination.

Also settled were MK Optics’ suits against Olympus, Fujifilm and Pentax (see IBO 4/30/15). The cases were voluntarily dismissed this summer without prejudice, except for Olympus, for which the case was dismissed with prejudice.

A case brought against Affymetrix in August in the US District Court for the Eastern District of Texas by Gene Reader, alleging infringement of two patents related to microarray readers, was voluntary dismissed by the plaintiff in September. The court ordered the dismissal of the case without prejudice in October. Similarly, Gene Reader’s June suit against Agilent Technologies involving the same patents was dismissed without prejudice in September. Tecan notified the court in October of a settlement with Gene Reader as the result of a June suit involving the same patent.