Affy’s patents involved in the complaints include: US Patent No. 5,902,723, Analysis of Surface Immobilized Polymers Utilizing Microfluorescence Detection; No. 6,403,320, Support Bound Probes and Methods of Analysis Using the Same; No. 6,420,169, Apparatus for Forming Polynucleotides or Polypeptides; No. 6,576,424, Arrays and Methods for Detecting Nucleic Acids; No. 7,056,666, Analysis of Surface Immobilized Polymers Utilizing Microfluorescence Detection; No. 0834575, Identification of Nucleic Acids in Samples; No. 0853679, Expression Monitoring by Hybridization to High Density Oligonucleotide Arrays; and No. 0799897, Kits and Methods for the Detection of Target Nucleic Acids with the Help of Tag Nucleic Acids.
In response, Illumina CEO Jay Flatley said the company is “disappointed to see that Affymetrix continues to choose to compete with Illumina in the court room rather than in the market place.
“Our policy is to respect the valid and enforceable intellectual property rights of others and to take licenses where appropriate,” Flatley added. “In that regard, we believe that we do not infringe any valid claims of the patents asserted by Affymetrix in its recent complaints.”
Illumina said it has “already taken several steps to curtail Affymetrix' overly broad approach to patent protection,” including seeking a declaration that a number of the patents are invalid, and asking the US Patent and Trademark Office to “reexamine and invalidate" the five US patents included in Affy's suit.
The suits come seven months after a jury sided with Affy in a patent-infringement suit Affy filed against Illumina in 2004. The jury in that case, filed in the US District Court for the District of Delaware, found that Illumina's arrays, assays, scanners, software, and related products infringe “one or more claims” of all five of the patents Affy mentioned in its suit.
The jury awarded total damages of more than $16.7 million for the period of 2002-2005 and imposed a royalty of 15 percent.
The next phase of that case will focus on the validity of Affymetrix's patents and is scheduled to begin on Feb. 11, 2008. The following phase is expected to occur in May or June 2008 and will determine whether Illumina's infringement was willful.
Affymetrix said it has also requested injunctive relief in this case, and will ask that the court take up this request once the patents are found to be valid.