In the second of IBO’s biannual reviews of new analytical-instrument and laboratory-product patent litigation (see IBO 4/30/14), the focus is on settlements and dismissals. Among the long-running disputes that have been resolved are cases involving Agilent Technologies and Illumina.

New Suits

GE Bio-Science filed suit against Bio-Rad Laboratories in the US District Court for the Southern District of New York in September (see table, page 4), alleging infringement of a patent by Bio-Rad’s Next Generation Chromatography (NGS) system, stating that the NGS’s “modular design is copied from the ÄKTA avant and looks strikingly similar to the ÄKTA pure system.” The complaint further states, “Bio-Rad used GE’s ÄKTA system in the design of the NGS system and intentionally designed the NGS to resemble the design of GE’s products, particularly the modular features.” The patent was issued on September 14.

The complaint requests that the court find the patent valid, enforceable and infringed; issue a preliminary and permanent injunction against Bio-Rad; and award compensation for infringement, including royalties and lost profits. In its answer, Bio-Rad filed counterclaims for declaratory judgments of noninfringement and invalidity of the patent.

This month, Swedish consumables firm Genovis and Hansa Medical, a Swedish drug-development company, filed suit in the US District Court in Delaware alleging infringement of a patent held by Hansa, which is exclusively licensed to Genovis, by Promega’s IdeS Protease. The patent covers Genovis’s FabRICATOR IdeS Protease. According to the complaint, “Promega’s IdeS Protease has a sequence which is covered by the claims of the ‘582 patent,” “Promega provides a protocol that instructs how to use the IdeS Protease to cleave IgG and isolate the FC and Fab fragments,” and “Promega’s IdeS Protease cleaves IgG at the same hinge site as disclosed in the ‘582 patent.” The complaint requests a judgment of willful infringement, a permanent injunction and damages. Promega has not yet filed an answer.

Six companies are named as defendants, each in separate cases filed last month in Delaware District Court by MK Optics, alleging patent infringement. The infringing products are “apparatuses that include a fiber optic bundle and a CCD and that are used for viewing an object,” according to the complaints, and include Boston Scientific’s Spyglass Direct Visualization System, Gatan’s ORIUS 830 SC200 Model 830 TEM CCD Camera, HORIBA Instruments’ Mini-CTT+ Mini Raman Spectrometers, New port’s MS257 Monochromator and Imaging Spectrographs, and Oxford Instruments’ Shamrock 303i, 500i and 750 Spectrographs. The plaintiff requests damages. None of the defendants have filed answers yet.

Dismissed

Agilent Technologies announced this month that all of the infringement claims brought against it by Genetic Technologies (see IBO 10/31/11) have been dismissed by the plaintiff. No settlement was involved, according to Agilent. The patent at issue, US Patent No. 5,612,179, expired in 2010. Genetic filed a joint stipulation of dismissal with prejudice (no further action can be brought on the same claims) in the US District Court for the Northern District (San Francisco) in October, with no right to an appeal. The case was consolidated in July with Genetic’s suit against Natera, which was also voluntarily dismissed in September.

This month, Illumina entered into a settlement and license agreement with Syntrix Biosystems related to the Syntrix’s 2011 infringement suit against the company (see IBO 4/30/11) that resulted in an award of damages and royalty payments (see IBO 6/30/13). Illumina agreed to make a one-time, $70 million payment for a release of past damages claimed and a fully paid-up exclusive license, according to an SEC filing. None of the parties admitted liability. Illumina filed an appeal last year, which Syntrix cross-appealed. The parties have filed a motion with the appeals court to vacate the judgment and remand the case to the district court to vacate some of the district-court orders. According to the SEC filing, the parties plan to file a motion to stipulate to a dismissal with prejudice and vacate the judgment.

A 2009 suit brought by Life Technologies (Thermo Fisher Scientific), Protein Research et al. against Illumina (see IBO 10/31/09) has been resolved. In April, the Southern California District Court dismissed Life’s motion for reconsideration of an earlier summary judgment (see IBO 10/31/13), granted the parties’ joint motion for dismissal without prejudice of Illumina’s counterclaims of invalidity and inequitable conduct, and entered a final judgment of noninfringement of US Patent Nos. 5,616,478, 5,958,698 and 6,001,568. Life filed an appeal of certain rulings in the case and, as stipulated by a court order, enforcement of rulings and costs and fees were stayed pending a final, nonreviewable judgment.

In September, the parties stipulated to dismiss with prejudice the claims, counterclaims and counter-counterclaims involving Life and Illumina’s patents, but to dismiss without prejudice Life’s counterclaims of invalidity and enforceability. Thermo Fisher stated in its third quarter SEC filing that the parties “settled these claims on terms not material to the company, including no amounts being paid by either party to the other.”

In a July complaint filed in the Massachusetts District Court but voluntarily dismissed in September, PerkinElmer and Caliper Life Sciences alleged infringement of four patents by Illumina’s sequencing technology.

In another quickly dismissed case, 3D Medical Imaging System filed a patent-infringement suit against Visualization Sciences and its parent company, FEI, in July in the US District Court for the Northern District of Georgia. The case was voluntarily dismissed with prejudice by the plaintiff in November.