IBO’s first of its biannual articles on patent infringement litigation involving analytical instrument and laboratory product companies highlights three new suits and a string of settlements.

New Suits

Illumina is once again the defendant in a patent infringement case. The nonprofit Scripps Research Institute filed suit in March in the US District Court for the Southern District of California alleging infringement of a patent by Illumina’s Bead Chip microarray products (see table). The patent expired in March 2012. The complaint stated, “The Scripps Research Institute contends that the oligos attached to Illumina’s BeadChip and other microarray products contain a bifunctional molecule as described by the claims of the ’596 patent with a polymer A, an identifier oligonucleotide C, and a linker.” The plaintiff requested damages and prejudgment interest, among other claims. Illumina has not yet filed an answer to the complaint.

In November 2015, PerkinElmer and its Caliper Life Sciences business filed suit in the US District Court for the District of Massachusetts against BioTechne and its ProteinSimple business, alleging infringement of six patents by ProteinSimple’s Simple Western system and Compass software, which is used with the Simple Western (see table). Among the remedies, PerkinElmer is seeking damages and an order to prevent further infringement. In February, Bio-Techne filed an answer denying the allegations and stating several affirmative defenses, including invalidity and prosecution history estoppel (the doctrine of equivalents cannot be evoked to protect claims surrendered during patent prosecution). Counter claims included noninfringement and invalidity. However, the case was dismissed this month per the parties’ stipulation.

This month, Bio-Rad Laboratories filed suit in the Delaware District Court against Thermo Fisher Scientific, alleging patent infringement by Thermo Scientific’s StepOne and StepOnePlus PCR systems (see table). Bio-Rad is seeking compensatory damages.

Settlements

Settlement agreements quickly resolved a number of recently filed cases. Unless otherwise noted, all the cases discussed below were dismissed with prejudice (a new suit cannot be filed on the same grounds).

IP licensing firm WiLAN announced another series of settlements regarding its infringements suits related to US Patent No. 6,313,452 (see IBO 10/31/15). Late last year, the company entered into license agreements with Leica Microsystems and Keyence, against which it filed suits in June 2015 and November 2015, respectively. In January, WiLAN announced licensing agreements with BioTek Instruments, FEI and Thermo Fisher Scientific, each of which it sued in November 2015. In all the above cases, the complaints were dismissed. According to court documents, in April, WiLAN also dismissed its November 2015 case against Hitachi High-Technologies. Cases remain pending against Carl Zeiss and Zygo.

Enzo Biochem announced in January a settlement agreement with Agilent Technologies in their 2012 infringement cases involving US Patent No. 7,064,197 (“System, Array and Non-Porous Solid Support Comprising Fixed or Immobilized Nucleic Acids”) (see IBO 4/30/12). As part of the settlement, Agilent made a $9 million payment. The claims were dismissed with prejudice. Enzo Biochem settled with Affymetrix last year in a case involving the same patent (see IBO 10/31/15).

Massively Parallel Instruments settled a March 2015 patent infringement case against Waters brought in the Northern District of California regarding US Patent No. 5,811,820 (“Parallel Ion Optics and Apparatus for High Current Low Energy Ion Beams”) (see IBO 10/31/15). The case was settled in January.

PerkinElmer settled a 2012 case brought by Uniloc against the company and CambridgeSoft, which PerkinElmer acquired in 2011 (see IBO 3/31/11) alleging infringement of US Patent No. 5,490,216 (“System for Software Registration”). The case was dismissed in April.

Also dismissed was the University of Pittsburgh—the Commonwealth System of Higher Education’s 2015 suit against PerkinElmer involving five patents (see IBO 10/31/15). A stipulation and joint motion for dismissal was granted in April.

Final Ruling

The US District Court for the District of Connecticut issued a new ruling against Enzo Biochem and Yale University in their 2012 suit against Applera (Thermo Fisher Scientific). The case was returned to the court to determine infringement following an appeals ruling last year (see IBO 4/30/16). In February, the District Court denied Enzo’s motion for entry judgment, stating that none of the patent’s claims were infringed, and closed the case.