Half-Year Litigation Review: Two Trial Dates Approach

In the first of IBO’s twice yearly report on new litigation among analytical instrument and laboratory product providers, we take a look at new patent infringement cases, as well as update the latest developments in other cases. Two cases are scheduled to come to trial in the next few months, patents related to microarray technology remain highly contested, and Bio-Rad, Eppendorf and Invitrogen remain active on the litigation front. Set for Trial Applied Biosystems (ABI) will be the plaintiff and Illumina the defendant in a trial scheduled to start in late September in the US District Court for Northern California. The suit was originally filed in 2006 against Solexa (see IBO 12/31/06), which was subsequently acquired by Illumina (see IBO 11/15/06) and Stephen C. Macevicz, PhD. In the suit, ABI charges that Dr. Macevicz violated an agreement to assign and disclose any of his inventions created while employed as a patent counsel with the company from 1992 to 1995. According to the complaint, while with ABI, Dr. Macevicz filed an application with the US Patent and Trademark Office (USPTO) that resulted to three patents—US Patents Nos. 5,750,341, 5,969,119 and 6,306,597 (DNA Sequencing by Parallel Oligonucleotide Extensions)—that were issued after he left the company. Dr. Macevicz joined Lynx Therapeutics in 1995, which was acquired by Solexa in 2005 (see IBO 9/30/04), and assigned the patents to Lynx. ABI charges Illumina with willful and malicious conduct in assisting Dr. Macevicz in breaking the agreement, as well as constructive fraud and unfair competition. ABI seeks punitive damages and injunctive relief and that the patents be declared void and unenforceable, stating that Dr. Macevicz failed to disclose prior art to the USPTO. Illumina’s counterclaims charge Applied Biosystems with infringement of the patents. The patents cover techniques employed by Illumina’s Genome Analyzer and ABI’s SOLiD DNA sequencing systems. Capping a five-year dispute, Veeco Instruments’ patent infringement suit against Asylum Research is scheduled to go to trial in Los Angeles, California, in August. Veeco claims that Asylum’s MFP-3D atomic force microscope infringes three of its patents: US Patents Nos. 5,224,376 and 5,237,859 (Atomic Force Microscope) and RE36,488 (Tapping Atomic Force Microscope with Phase or Frequency Detection). Asylum asserts that it did not infringe the patents and that the patents are invalid. In addition, Asylum alleges that certain Veeco products infringe US Patent No. 7,825,020 (Atomic Force Microscope for Generating a Small Incident Beam Spot), which is licensed to Asylum by the University of California (UC). In response, Veeco claims that the patent is invalid. In a July 3 document, Veeco estimated damages at $33 million plus interest. Microarrays In June, the US District Court for the Northern District of California in June granted Affymetrix’s motion for summary judgment in Agilent’s appeal of a 2006 decision by the USPTO Board of Patent Appeals and Interferences. The USPTO Board had awarded priority to a patent application by Affymetrix, resulting in US Patent No. 6,513,968 (Apparatus and Method for Mixing a Film of Fluid). Agilent is appealing the decision. After settling with Illumina earlier this year (see IBO 1/15/08), Affymetrix was named as a defendant in a complaint filed on July 1 in the US District Court of Massachusetts by E8 Pharmaceuticals and MIT (see table). The suit stems from claims to the patent made by both MIT, which had licensed rights to E8, and Affymetrix that resulted in an 2006 interference proceeding by the USPTO. In May, the USPTO ruled in favor of MIT. The suit seeks a permanent injunction and monetary damages. Oxford Gene Technology (OGT), founded by microarray pioneer Sir Edwin Southern, filed suit in May against BioArray Solutions. BioArray Solutions’ BeadChip technology is based on microparticle chemistry and semiconductor processing. The company’s ENA IgG BeadChip Test System gained FDA approval in 2005. In the suit, filed in the US District Court of Delaware, OGT claims infringement of US Patents No. 6,307,039 (Method for Analyzing a Polynucleotide Containing a Variable Sequence and a Set or Array of Oligonucleotides Thereof), 6,770,751 (Method for Analyzing a Polynucleotide Containing a Variable Sequence and a Set or Array of Oligonucleotides Thereof) and 7,192,707 (Method for Analyzing Polynucleotide Targets Using Tethered Oligonucleotide Probes). BioArray has not yet filed a response to the compliant. OGT has previously settled patent infringement cases against Affymetrix, Amersham, Motorola, Pharmaceia, Nanogen, Mergen and Telechem. Bio-Rad and Eppendorf Eppendorf AG and Bio-Rad Laboratories continue their legal tussle. Bio-Rad Laboratories filed two patent infringement suits against Eppendorf AG last year and Eppendorf countersued (see IBO 9/30/06). Since then, Eppendorf has initiated two more actions. In October 2007, the company filed suit in US District Court in the Western District of Wisconsin, charging Bio-Rad and MJ Research with infringement of US Patent No. 6,767,512 (Temperature-Regulating Block with Temperature-Regulating Devices) by several of their thermal cycler product lines. And in March of this year, Eppendorf filed suit against Bio-Rad in the US District Court for the Northern District of California, asserting that Bio-Rad and MJ Research’s Hard Shell 96- and 384-well skirted microtiter plates infringe one of its patent (see table, page 4). In its response, Bio-Rad stated that it did not infringe the patent and that the patent is invalid. Then, in June, Bio-Rad filed suit against Eppendorf in the US District Court for the Eastern District of Texas. The suit alleges that Eppendorf’s Multiporator and Electroporator product lines and protocols infringe three US patents held by Bio-Rad (see table, page 4). The parties are currently in court-ordered mediation regarding Bio-Rad’s 2007 case charging infringement of US Patent No. 6,340,589. Invitrogen Invitrogen settled a number of cases this year and last, including its suit against Harvard and the suit brought by Genetic Applications (see IBO 9/30/07). Invitrogen also dismissed its case against Novexin after Novexin changed its name to Expedeon Protein Solutions (see IBO 9/30/07). But Invitrogen was also busy with new litigation. In April, the company filed suit against GE Healthcare in US District Court for the Eastern District of Texas, claiming infringement of six US patents (see table, page 4) related to reverse transcriptase enzymes. Three of the patents (US Patents Nos. 6,610,522, 6,589,768 and 6,063,608) expired in January. In the same court, on the same day, Invitrogen filed a separate case, claiming patent infringement by several of GE’s GenomiPhi and TempliPhi kits (see table, page 4). Also in April, Invitrogen, and its Quantum Dot and Molecular Probes subsidiaries, along with the UC Regents, filed suit against Evident Technologies in the US District Court for the Eastern District of Texas. The suit charges Evident’s EviTag and EviFluor products with infringing US Patents Nos. 6,423,551, 6,699,723 and 6,927,069 (Organo Luminescent Semiconductor Nanocrystal Probes for Biological Applications and Process for Making and Using Such Probes), which were licensed to Invitrogen by the UC Regents.

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