Litigation Review: Sequenom and Invitrogen File New Suits

IBO’s latest survey of US litigation among selected instrument and lab product companies finds one case set for trial, four new cases and a series of settlements. Among the suits that have settled or have been voluntarily dismissed are suits that were detailed in our last overview of patent litigation in July (see IBO 7/15/08).

Originally scheduled for September and then December, the jury trial in Applied Biosystems’ (now Life Technologies) suit against Solexa (now Illumina) involving three patents for “DNA Sequencing by Parallel Oligonucleotide Extensions” (see IBO 7/15/08) has now been postponed until January 5 due to the judge’s schedule. In August, the US District Court for the Northern District of California granted in part and denied in part Applied Biosystems’ motion for summary judgment of noninfringement. The court granted summary judgment for all asserted claims of US Patent Nos. 6,306,597 and 5,750,341, but denied summary judgment of noninfringement for claim 1 of US Patent No. 5,969,119. The court also denied Solexa’s motion for partial summary judgment of infringement. In September, the parties stipulated that the willful-infringement complaint be directed only to Agencourt Personal Genomics prior to its acquisition by Applied Biosystems (see IBO 5/31/06).

Invitrogen (now Life Technologies), Applied Biosystems’ new owner, is involved in two new patent infringement cases, both related to prior litigation. In October, the company filed suite against Oxford Biomedical Research and Vanderbilt University in the US District Court for the Western District of Wisconsin (see table). In 1996, Oxford Biomedical licensed Vanderbilt’s cytochrome P450 recombinant protein technology to PanVera, which was acquired by Invitrogen in 2003 (see IBO 2/15/03) . In 2005, Oxford Biomedical filed suit against Invitrogen, alleging breach of contract. In the course of the dispute, Invitrogen charges that an actual controversy arose between the parties as to the scope and validity of the patent. According to Invitrogen, the patent covers only the method for purifying P450 proteins, not the cell-culture host material. Invitrogen seeks that the court declare claims 1–9 of the patent invalid and rule that Invitrogen does not infringe the patent, and, consequently, that the companies’ agreement has expired. Oxford Biomedical and Vanderbilt denied the charges.

Invitrogen has also found itself named in a suit brought by eBioscience in the US District Court for the Southern District of California (see table). EBioscience licensed Evident Technologies’ quantum dots technology earlier this year. Invitrogen filed a patent infringement suit against Evident in April (see IBO 7/15/08). Ebioscience seeks declaratory judgment of noninfringement and invalidity of the patents in order to clarify the company’s legal status as a licensee. In response, Invitrogen has filed a motion to dismiss the case due to a lack of subject-matter jurisdiction.

In another case involving life science tools, Sequenom filed suit against Ibis Biosciences, a subsidiary of Isis Pharmaceuticals, in October in the US District Court for the District of Delaware. The suit alleges infringement of three of Sequenom’s patents (see table) by Ibis’s T5000 Biosensor System technology. Sequenom is charging that Ibis Biosciences infringed the patents, contributed to their infringement and actively induced others to infringe by selling the product and associated products. Sequenom is seeking a permanent injunction and enhanced monetary damages.

Thermo Fisher Scientific is the defendant in a patent infringement case brought by Scientific Specialties (SSI) in the US District Court for the Northern District of California 9see table). SSI charges that Thermo Fisher Scientific’s Abgene EasyStrip product, which is described in the filing as “an integrated strip of microtubes and seal caps,” and possibly other products, infringe SSI’s patent. SSI seeks damages and royalties and that Thermo be enjoined from further infringement. In addition, SSI charges that the infringement is willful.

Bio-Rad Laboratories and Eppendorf AG have patched up their differences. Bio-Rad’s three suits against Eppendorf and Eppendorf’s three suits against Bio-Rad (see IBO 9/30/07, 7/15/08) were voluntarily dismissed. Oxford Gene Technology’s case against BioArray Solutions (see IBO 7/15/08) was dismissed last month, following the signing of a settlement and licensing agreement.

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