IBO’s first patent litigation article for 2013 summarizes new patent infringement litigation involving instrument and lab product companies, as well as settlements and development in ongoing suits.

New Suits

In the US District Court of Delaware, Illumina is the defendant in a case brought by optics firm Cirrex Systems (see table, page 3). Cirrex alleges infringement of four patents by Illumina’s VeraCode microbeads (the ‘673 patent) and optical-bead identification systems (the ‘250 and ‘992 patents). Illumina’s answer to the complaint is due this month.

Also in the Delaware District Court, Alltech Associates, a business of W. R. Grace & Co., has filed suit against Teledyne Isco, a unit of Teledyne Technologies (see table, page 3). The suit alleges infringement of four patents covering technology used in Alltech’s Reveleris X2 flash chromatography systems by Teledyne’s CombiFlash flash chromatography systems. The patents were issued last year. Teledyne has not yet filed an answer.

Bruker and several drug companies were named as defendants in a suit brought last year by Vertical Analytics in the US District Court for the District of Delaware (see table, page 3). Vertical Research is a subsidiary of Acacia Research, a so-called “patent troll,” a company that buys patents in order to engage in infringement suits. Acacia is also a plaintiff in a suit involving PerkinElmer (see IBO 10/31/11).

The Bruker suit alleges infringement by Bruker’s D8 X-ray powder diffraction system. The technology at issue is now owned by Vertical, but was originally assigned to Avantium International and employed by Avantium’s Crystallics drug discovery service business. According to the complaint, Avantium discussed the technology with Bruker in 2002 and Bruker subsequently filed for patents on the technology and commercialized it, despite non-disclosure agreements. Pfizer and other drug companies are named as defendants due to their use of the D8. The complaint states that Crystallics, which was spun off from Avantium, lost business due to the D8. In November 2012, Bruker answered the complaint and asserted 10 defenses, including non-infringement, invalidity and research exemption.

Also last year, in the US District Court for the District of Massachusetts, New England Biolabs (NEB), SomaLogic and Gilead Sciences, an involuntary plaintiff, filed suit against Enzymatics, alleging infringement of two patents owned by Gilead (see table). Gilead exclusively licensed the patents to SomaLogic, which exclusively sub-licensed them to NEB, a competitor of Enzymatics. The complaint claims willful and deliberate infringement by Enzymatics’ Taq DSC 2.0 Polymerase and other products. In its answer to the complaint, filed in January, Enzymatics asserts the action is being brought in order to circumvent a ruling limiting discovery in a state court action brought against Enzymatics by NEB in 2011.

New Developments

The bitter battle between Promega and Life Technologies continues on several fronts. In Promega’s 2012 suit against Applied Biosystems (Life) seeking to declare US Patent No. RE43,096 invalid (see IBO 4/30/12), the California Institute of Technology (Caltech) was added as a defendant in May 2012. In October 2012, Caltech transferred an exclusive license for the technology from Applied to Life.

In March, the suit was reassigned to Seventh Circuit US Court of Appeals Judge Richard A. Posner, who was designated a District Court judge for this case. On April 4, Judge Posner granted partial summary judgment for Life, finding that Promega’s PowerPlex 16 HS System literally infringes claims 62, 63 and 66 of the patent. The court also ruled that Promega breached a 2006 cross-licensing agreement with Life by refusing to pay royalties. In addition, the court ruled against Promega’s motion to declare the patent invalid due to reissue recapture (limiting a broadening of the original patent) and its motion to bar Life’s infringement claims due to laches (unreasonable delay in prosecution). However, Life’s motions for summary judgment of literal infringement of claim 70 and for patent priority date were denied. The trial to determine the patent’s validity is set for July.

Also, new litigation between the companies was initiated late last year. In the US District Court for the Southern District of California, Life filed a complaint for declaratory judgment. Life is seeking declaration that it retains the rights under a 1996 licensing agreement with Promega to the US Patent No. RE37984 “related to cell line authentication/identification uses, including without limitation the rights to use, make, have made, sell, offer for sale, import and/or export products for cell line authentication/identification use.” The patent and license agreement were the subject of the 2010 suit brought by Promega against Life, which was decided last year (see IBO 9/15/12). Life is also seeking to resolve a licensing dispute with Promega using binding arbitration, which is pursuant to the terms of the agreement, according to Life. Additionally, Life is asking the court to declare that the patent and agreement covers the company’s new AuthentiFiler products.

Subsequently, the AuthentiFiler products were named as the infringing product of the patent in a suit brought earlier this year in the US District Court for the Western District of Wisconsin by Promega against Life (see table, page 3). The Max Planck Society is named as an involuntary plaintiff.

A Wisconsin District Court in April rejected Promega’s post-judgment motions in the firm’s 2010 suit against Life, which went to trial last year (see IBO 9/15/12). Promega has filed an appeal. In the same case, late last month, the US Court of Appeals for the Federal Court ruled against a different Promega appeal, affirming the lower court’s order compelling arbitration regarding royalty payments.

Settled

EBioscience, which was acquired by Affymetrix last year (see IBO 6/30/12), has cleaned its legal slate. Earlier this year, Life et al. and eBioscience agreed to dismiss both of Life’s infringement suits against eBioscience (see IBO 4/30/11, 10/31/12) with prejudice. Settled late last year was Panagene et al.’s suit against Bio-Synthesis (see IBO 10/31/12). Panagene stated that the agreement’s terms included payments for past damages and Bio-Synthesis ending its sale of Panagene products. Genetic Technologies signed a settlement agreement with 454 Life Sciences (see IBO 10/31/11) in December 2012. According to Genetic, the firms entered into a settlement, covenant and license agreement.