In this issue, IBO presents its second of two articles this year detailing developments in patent infringement litigation involving instrument and lab product firms (see IBO 4/30/13). The pace of new litigation appears to have slowed. In addition, new settlements and rulings have put to rest, for now, some long running disputes.

New Suits

In a new suit involving in vivo animal imaging instrumentation, PerkinElmer has sued Bruker in US District Court in Northern California. The suit alleges that Bruker breached a 2011 settlement agreement between Caliper Life Sciences, which was later acquired by PerkinElmer (see IBO 9/15/11), and Carestream Health, whose animal imaging business was subsequently bought by Bruker (see IBO 9/30/12). The agreement settled a 2010 lawsuit brought by Caliper against Carestream for patent infringement (see IBO 4/30/10) and stipulated that Carestream would not sell or market in vivo optical imaging products for applications infringing several patents licensed from Stanford University by Caliper related to imaging methods used by the IVIS products.

PerkinElmer stated in its complaint that Bruker “continues to market its products in a manner that will induce infringement” and alleges infringement by Bruker’s Optical In-Vivo Imaging System product line. The suit also alleges breach of good faith and fair dealing, tortious interference with prospective economic advantage, and infringement of nine patents. PerkinElmer seeks damages, pre- and post-judgment interest, restitution and disgorgement of profits, a permanent injunction and treble damages. In August, Bruker filed an answer to the complaint, denying the allegations and counterclaiming for declaratory judgment of non-infringement and invalidity.

In the US District Court for the Western District of Pennsylvania, the University of Pittsburgh filed suit last month against Molecular Devices, alleging infringement of its four patents “related to an integrated system for incubating cells in a dynamically controlled environment and automatically determining the state of the incubated cells.” The suit claims that Molecular Devices’ ImageXpress Micro XL System with the Fluidics option, introduced in 2011, infringes the patents. The suit alleges direct, contributory, induced and willful infringement. The plaintiff is seeking compensatory and treble damages and interest. Molecular Devices has not yet filed an answer.

Rulings

Litigation involving Life Technologies and Promega has moved from the District Courts to the Appeals Courts. In a blow to Life, in June, the District Court of the Northern District of Illinois granted Promega’s motion for summary judgment that three claims of US Patent No. RE43,096, which is held by the California Institute of Technology and licensed to Life, are invalid (see IBO 4/30/12, 4/30/13) due to failure to meet the written description requirement, anticipation, double patenting and obviousness. The court entered a judgment of declaratory judgment of the patent’s invalidity and dismissed all remaining claims and counterclaims. Quoted by law360.com, Martin Lueck, Promega’s lawyer, stated, “The ruling means that Promega STR [short tandem repeat] products can be used for any purpose, while the Life Tech STR products can be labeled for forensic use and paternity testing only.” Life promptly filed an appeal, and Promega cross appealed. Both companies also have appeals pending in a 2010 case (IBO 9/15/12).

However, other litigation involving the firms has been settled. Two cases filed in December 2012 were voluntarily dismissed. In April, Life requested dismissal without prejudice (the matter can be litigated again) of its case seeking declaratory judgment that its agreement with Promega covers its AuthentiFiler products (see IBO 4/30/13). In June, Life requested dismissal with prejudice of its complaint for declaratory judgment that it retains rights to a licensing agreement with Promega for Patent No. RE37894 (see IBO 4/30/13). Promega voluntarily dismissed with prejudice its case filed earlier this year against Life for infringement of RE37984 (see IBO 4/30/13).

Settled

In July, Illumina and Complete Genomics, now a subsidiary of BGI-Shenzhen, announced a settlement agreement involving Illumina’s multiple patent infringement suits against the company (see IBO 9/30/10, 10/31/12). The cases were dismissed with prejudice, and the companies entered into mutual releases. This follows a March decision by the Northern California District Court in Illumina’s 2010 suit against Complete Genomics for infringement of US Patent No. 6,306,597 (see IBO 9/30/10) that granted Complete Genomics’ motion for summary judgment of invalidity. The court had granted a similar motion by Complete Genomics related to the same patent in fall 2012. The parties had earlier stipulated to the dismissal of claims involving two other patents.

Resonant Biosystems’ 2011 patent infringement suit against PerkinElmer, Corning and other defendants (see IBO 10/31/11) was dismissed in June as stipulated by the parties.

New Developments

Illumina announced in March that the District Court for the Southern District of California ruled in its favor in a 2009 suit brought against the firm by Life and the co-plaintiffs (see IBO 10/31/09). The court granted Illumina’s motion for summary judgment that its sequencing systems do not infringe three of Life’s patents. However, the case remains before the court. Life has filed a motion for reconsideration of the summary judgment order. In addition, the court has yet to rule on Illumina’s counterclaims for declaratory judgment of invalidity and its counterclaims for declaratory judgment of unenforceability against Life for three Illumina patents .

In addition to this case, Illumina is a defendant in four cases involving Cornell University and Life (see IBO 9/30/10), Columbia University and Intelligent BioSystems (see IBO 4/30/12), Enzo Life Sciences (see IBO 4/30/12) and Cirrex (see IBO 4/30/13). Illumina is the plaintiff in a case against Life (see IBO 12/31/11).