New suits as well as a number of settlement agreements highlight IBO’s second look this year (see IBO 4/30/09) at patent infringement activity in US courts among instrument and lab product companies.

New Suits

Life Technologies has filed a string of new infringement actions in recent months. In addition to the company’s complaint against Bio-Rad Laboratories related to Bio-Rad’s Precision Plus Protein Standard products (see IBO 8/31/09), it also filed suit against Biosearch Technologies, a developer of oligonucleotide-based research tools, in August, alleging infringement patents for fluorescent probes for quantitative PCR (see table). And last month, Life Technologies (Applied Biosystems) and its co-plaintiffs (see table) filed suit against Illumina in Delaware District Court, alleging infringement of three patents by Illumina’s Genome Analyzer DNA. The co-plaintiffs are the Institute of Protein Research (IPR), part of the Russian Academy of Sciences, and two IPR scientists from whom Applied Biosystems exclusively licensed the technologies, as well as another individual (see table).

In its answer to the complaint, Illumina stated that the patents relate to a sample preparation method using a porous matrix. Illumina seeks a declaratory judgment that it does not infringe and that the patents are invalid. In a statement, Illumina announced that these patents expire in 2012 and 2014. Illumina also counter-sued Life Technologies, alleging that Life Technologies’s SOLiD DNA sequencer infringes four Illumina patents: US Patent Nos. 6,831,994 and 6,654,505 (System and Apparatus for Sequential Processing of Analytes); 7,232,656 (Arrayed Biomolecules and Their Use in Sequencing); and 7,598,035 (Method and Compositions for Ordering Restriction Fragments). Illumina announced that these patents, which expire in 2017 and 2019, cover sample preparation, data gathering and genome analysis. Life Technologies did not issue a statement.

Microarray-related patent activity also continued. In June, Affymetrix answered Illumina’s patent infringement claims filed earlier this year involving DNA microarray technology (see IBO 5/15/09). Affymetrix asserted that the US Patent No. 7,510,841 is invalid and that it does not infringe it. Affymetrix also counterclaimed for declaratory judgment. This summer, Eppendorf filed an action in the U.S. District Court for the District of Delaware against Nanosphere, alleging infringement of an Eppendorf patent by Nanosphere’s Verigene product (see table).

Settlements

As Life Technologies took on new patent challenges, it also settled three cases. Following a jury trial in May in Michigan District Court, but before a verdict could be read, defendant Life Technologies (Invitrogen) and plaintiff Oxford Biomedical Research reached a settlement in a patent infringement case related to recombinant protein technology (see IBO 12/15/08). Earlier in the year, the judge had removed Vanderbilt University as a co-plaintiff due to lack of personal jurisdiction.

In September, Life Technologies (Applied Biosystems) and Michigan Diagnostics agreed to dismiss a two-year-old dispute in which Applied Biosystems alleged infringement of three patents related to chemiluminescent products and methods (see IBO 9/30/07): US Patent Nos. 6,514,717 and 6,322,727 (Kit for Conducting an Assay to Detect a Substance Using Enzymatically-Induced Decomposition of Dioxetanes); and 6,107,024 (Method and Compositions Providing Enhanced Chemiluminescence from 1,2-Dioxetanes, Which Are Related to Chemiluminescence).

Likewise, the five-year dispute between Life Technologies (Applied Biosystems)/MDS Sciex and Thermo Fisher Scientific over an MS technique settled in August (see IBO 9/15/04), after the companies stipulated to dismiss the action. The consolidated action included Applied Bisoystems’ 2004 action against Thermo for infringement of US Patent No. 4,963,736 (Mass Spectrometer and Method and Improved Ion Transmission), as well as Thermo’s 2005 suit against Applied Biosystems, alleging infringement of US Patent No. 6,528,784 (Mass Spectrometer System Including a Double Ion Guide Interface and Method of Operation). Each company had requested that the Patent and Trademark Office (PTO) re-examine the other firm’s patent. Earlier this year, the PTO confirmed the claims of US Patent No. 6,528,784 and reissued a broader patent as US Patent No. PRE40,632.

Thermo Fisher Scientific agreed to settle a suit brought late last year in the US District Court for the Southern District of Indiana by Helmer, a maker of temperature control products for the lab market. The action alleged that Thermo’s I Series products and ICAN mark constituted unfair competition and infringement. In June, Helmer and Thermo stipulated to dismiss the claims and counterclaims without prejudice.

Sigma-Aldrich was the last of 10 companies to reach a settlement with PSN Illinois. The case, filed in US District Court in the Northern District of Illinois in July 2008, charged 10 firms, including Sigma-Aldrich, EMD Biosciences, VWR and Millipore, with infringement of US Patent Nos. 5,856,443 and 6,518,414B1 (Molecular Cloning and Expression of G-Protein Coupled Receptors). Sigma-Aldrich had filed a third-party complaint against Exalpha Biologicals, its supplier of the alleged infringing products in that judicial district, for breach of contract and indemnity. But in June, Sigma-Aldrich settled with PSN, thereby closing the case.

Appeal Ruling

In Agilent’s three-year battle in federal court to review the US Patent and Trademark Office’s decision to award priority to Affymetrix’s US Patent Application No. 10/619,224 (Bioarray Chip Reaction Apparatus and Its Manufacture) and cancellation of parts of Agilent’s US Patent No. 6,513,968 (Apparatus and Method for Mixing a Film of Fluid) (see IBO 11/30/06). After the US District Court for the Northern District of California ruled in favor of Affymetrix last year, Agilent appealed the decision (see IBO 7/15/08). This summer, the Ninth Circuit Court of Appeals ruled for Agilent, stating that the US District Court for the Northern District of California had erred in its claim construction, dismissal of Agilent’s motion for summary judgment and its granting of Affymetrix’s cross motion. The Court of Appeals stated that the trial court should have used Agilent’s patent filing, not Affymetrix’s, in construing the claim. It also wrote that Affymetrix’s claims recounted in its patent filing to provoke the interference proceeding were not supported by its originating patent, and the written description was inadequate. Affymetrix has filed a petition for a full hearing before the Appealate Court.

Trail Set

Scheduled to go to trial next month in the US District Court for the District Massachusetts is Cohesive Technologies’ patent infringement suit against Waters. Last fall, the case was sent back to the trial court, following an appeal by Cohesive (see IBO 4/30/09).