Familiar names dominate the first of IBO’s twice yearly review of patent litigation among analytical instrument companies. DNA sequencing technology has given rise to a new set of infringement suits. In addition, other life science techniques and XRF are the focus of new litigation.

New Suits

Affymetrix and Illumina are at it again following the dismissal last year of Illumina’s patent infringement case against Affymetrix (see IBO 12/31/10). Related to that action, last month, Affymetrix and Gregory L. Kirk filed suit in the US District Court for the Western District of Wisconsin against Illumina for correction of inventorship (see table, page 3). Affymetrix alleged that Illumina failed to name Dr. Kirk as an inventor on the two patents that were the subject of the earlier dispute. In its complaint, Affymetrix stated it is “a licensee of Dr. Kirk’s rights under the patents, and holds an undivided, one-half interest in his rights.” Affymetrix alleged that Dr. Kirk helped develop the technology, but was excluded as a named inventor on the provisional patent application “in an attempt to secure for Illumina exclusive ownership rights to that application and any patents that may issue from that application.” Illumina filed a motion to dismiss the action.

Illumina is also the target of a patent infringement suit brought last year in the US District Court for the Western District of Washington by Syntrix Biosystems (see table). Syntrix alleged that Illumina’s BeadChip, Array Matrix, HiScan and Array of Array products infringe a patent held by Syntrix owner and founder John A. Zebala. The suit also charged Illumina with unjust enrichment as well as violation of the Uniform Trade Secrets Act, stating that in 2000 Dr. Zebala provided Dr. Stuelpnagel with trade secret information under a nondisclosure agreement. Illumina denied the allegations.

In the latest infringement suit involving DNA sequencing technology, Life Technologies filed suit last month in US District Court for the Northern District of California against Pacific BioSciences (see table). The suit stems from a January ruling in an interference proceeding before the US Patent and Trademark Office’s Board of Patent Appeals and Interferences involving a patent held by Life Technologies and Pacific BioSciences’ Patent Application No. 11/459,182 (A System and Method for Nucleic Acid Sequencing by Polymerase Synthesis). An interference proceeding is a process to determine which patent among several patents that contain the same subject matter should be issued. The Board ruled that all of the claims under review of Life Technologies’ patent and certain claims of Pacific BioSciences’ patent application were unpatentable due to “lack of written description support.” In its complaint, Life Technologies asked the court to reverse several Board rulings and the judgment. Pacific BioSciences filed a cross-action complaint for a reversal of the Board’s findings of unpatentability and refusal related to its patent application claims.

Life Technologies is also the plaintiff in two other recent actions. In October last year, the company, its Molecular Probes subsidiary and the Regents of the University of California (UC) filed suit in the US District Court for the Southern District of California against eBioscience. Life Technologies asserted that certain eBioscience eFluor products, including its Nanocrystals products, infringe US Patent 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 are exclusively licensed to Life Technologies by UC. In its answer to the complaint, eBioscience denied infringement. These are the same patents that were at the center of Life Technologies’ infringement suit against Evident Technologies (see IBO 7/15/08), which resulted in a judgment and injunction against Evident. EBioscience licensed rights to Evident’s quantum dots product line in fall 2008 (see IBO 11/30/08).

Also in the US District Court for the Southern District of California, Life Technologies filed its second suit against Biosearch Technologies for infringement (see table), citing Biosearch’s BHQplus probes and other products. The first patent infringement suit between the parties was filed is ongoing (see IBO 10/31/09). Biosearch answered the complaint, stating that it did not infringe the patent. In addition, Biosearch counterclaimed breach of contract and unfair competition, among other counterclaims, as well as infringement of its US Patent Nos. 7,019,129, 7,109,312, 7,582,432 (Dark Quenchers for Donor-Acceptor Energy Transfer). Biosearch asserted that Life Technologies violated its supply agreement for Biosearch’s Black Hole Quencher probes, which restricts sales to R&D applications, among other allegations.

In a patent dispute involving electrophoresis gel–holding cassettes, Australian firm Nu Sep filed suit last year in District Court in the Northern District of Georgia against Thermo Fisher Scientific, its Pierce subsidiary and its supplier UK-based Expedeon (see table). Nu Sep alleged infringement of its US patent by Expedeon’s RunBlue products, which Thermo and Pierce sell under the Pierce Protein brand name. NuSep is seeking a permanent injunction and damages. In its response, Expedeon denied the allegations, stating that the patent is invalid, and counterclaimed invalidity as well as tortious interference with business relations, stating that NuSep threatened Expedeon with a lawsuit and wanted to be Pierce’s sole supplier of gel cassettes. Thermo denied that its products infringed.

In a similarly contentious dispute, X-ray Optical Systems (XOS) filed suit in the US District Court for the Northern District of New York earlier this year against competitor Innov-X Systems (see table, page 3). The complaint alleged that Innov-X’s patent applications disclosed and claimed “the inventions conceived and reduced to practice” by three XOS employees. XOS stated that it shared the technology with Innov-X under mutual nondisclosure agreements as part of the companies’ development of a dual-source XRF system and a fuel analysis system. XOS alleged that the technology is used in Innov-X’s SEA-MATE and MESA products. XOS claimed correction of inventorship and ownership, breach of contract, breach of implied covenant of good faith and fair dealing, misappropriation of trade secrets, conversion, unjust enrichment and unfair competition. Innov-X denied the allegations and counterclaimed for fraud, alleging that XOS introduced its AliSiN and MAXINE products to directly compete with Innov-X products based on market information Innov-X had provided to XOS. The counterclaim also alleged that XOS delayed the introduction of Innov-X’s product for sulfur analysis so that it could bring its competing product, the Catfine ED-XRF, to market first.

Settled

A few patent infringement cases involving instrument makers settled late last year and earlier this year. The Research Foundation of the State University of New York’s NMR-related infringement suit against Bruker and Varian (see IBO 4/30/09) was dismissed in December 2010, following the University’s signing of settlement and licensing agreements with both companies. Also, Boram Pharm’s suit against Life Technologies (see IBO 4/30/10) involving cell expression systems was dismissed in January as stipulated by the parties.

Phenomenex announced in February that the University of Delaware dropped its 2005 patent infringement suit against the company. The suit involved US Patent No. 5,599,625 (Products Having Multiple-Substituted Polysiloxane Monolayer). A Markman Hearing regarding the patent was held in January. Also, in March, Phenomenex dismissed its 2010 suit against Waters for false advertising and unfair competition (see IBO 9/30/10).

 Selected New US Patent Infringement Cases Among Instrument and Lab Product Companies

 Plaintiff             Defendant         US Patent No. Patent Title                                              Case Filed

 Affymetrix,           Illumina          7,510,841     Methods of Making and Using Composite Arrays for the      3/14/2011

 Gregory L. Kirk                         7,612,020     Detection of a Plurality of Target Analytes 

          

 Life Technologies     Biosearch         7,160,997     Methods of Using FET Labeled Oligonucleotides that        12/27/2010

                       Technologies                    Include a 3'–5' Exonuclease Resistant Quencher 

                                                       Domain and Compositions for Practicing the Same

 Life Technologies    Pacific BioScience 7,329,492     Methods for Real-Time Single Molecular Sequence           3/31/2011

                                                       Determination

  

 NuSep                Thermo Fisher      5,954,934     Cassette for Electrophoresis Gels                         11/2/2010  

                      Scientific,Pierce

                      Biotechnology,

                      Expedeon Ltd.,

                      Expedeon Inc.

    

 Syntrix Biosystems   Illumina           6,951,682      Porous Coatings Bearing Ligand Arrays and Use Thereof    11/24/2010

 X-Ray Optical        Innov-X Systems    7,286,633      Fuel Analysis System,                                    2/9/2011

 Systems                                 7,440,541      Dual Source XRF System