Settlements Highlight Patent Litigation Developments

IBO’s second review (see IBO 5/15/16) this year of patent litigation among instrument and lab product companies highlights recent settlements, including two involving Illumina.


In July, Illumina, the University of Washington and the UAB Research Foundation settled their lawsuit and International Trade Commission (ITC) complaint against Oxford Nanopore Technologies brought earlier this year (see IBO 2/29/16, 3/15/16).  The parties agreed to a Consent Order, Final Judgment and Permanent Injunction, under which Oxford Nanopore agreed not to challenge the validity of the patents under dispute, and to cease manufacturing and selling the violating product (“a nanopore comprising one or more polypeptides having an amino acid sequence at least 68% Identical to the full-length amino acid sequence of the wild-type Mycobacterium smegmatic porin A [MspA] or to the amino acid sequence of a MspA Paralog”) in the US. As Science reported this summer, it is unknown if Oxford Nanopore’s system utilized such a nanopore. According to the Consent Order Stipulation and Settlement Agreement filed with the ITC, the settlement does not apply to the “CsgC Nanopore,” constructed from the wild-type Escheridia coli outer membrane lipoprotein CsgG, which Oxford Nanopore recently introduced.

Also involving sequencing, last month, the US District Court for the Southern District of California granted the defendant’s motion to dismiss for failure to state a claim in Illumina’s 2011 case against Life Technologies, Applied Biosystems and Ion Torrent Systems (now Thermo Fisher Scientific) for infringement of US Patent No. 7,060,431 (“Method of Making and Decoding of Array Sensors with Microspheres”).

In July, Enzo Life Sciences’ suit against Illumina was dismissed following a joint stipulation of dismissal with prejudice. The 2012 suit alleged infringement of US Patent No. 7,064,197 (“System, Array and Non-porous Solid Support Comprising Fixed or Immobilized Nucleic Acids”). Enzo Biochem stated in its SEC 10-K statement filed this month that the settlement amount was $14.5 million. The patent was also the subject of previous settlement agreements with Agilent Technologies (see IBO 5/15/16), Affymetrix (see IBO 10/31/15) and Thermo Fisher Scientific (Life Technologies) (see IBO 5/31/16).

Promega and Genovis each announced in June the settlement of Genovis and Hansa Medical’s suit against Promega  (see IBO 11/15/14). According to Genovis, Promega has licensed rights to US Patent No 7,666,582 (“IdeS, An IgG-Degrading Enzyme of Streptococcus Pyogenes”). Promega stated that the settlement allows the continued manufacture, sale and support of its IdeS and IdeZ proteases.

Advanced Microscopy, a subsidiary of IP firm WiLAN, settled the final two cases it had pending against microscopy companies regarding US Patent No. 6,313,452 (“Microscopy System Utilizing a Plurality of Images for Enhanced Image Processing Capabilities”). In June, the court approved WiLAN and Carl Zeiss’s joint stipulation of dismissal of the claims and counterclaims with prejudice. Carl Zeiss announced that the settlement came following an Inter Partes Review by the Patent Trial and Appeal Board, initiated by Carl Zeiss, that ruled in favor of Carl Zeiss. In September, WiLAN and Zygo also agreed to a joint stipulation of dismissal.

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