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Invitrogen, Clontech Settle Decade-Old Patent Dispute as Invitrogen Seeks Stay in Other Case

This story originally appeared in Biocommerce Week, a newsletter that has been discontinued.
 
Invitrogen and Clontech Laboratories have settled a decade-old patent suit, but the firms are keeping the terms of the settlement confidential.
 
The suit was initially filed on Dec. 31, 1996, by Life Technologies, which Invitrogen acquired in 2000, and alleged that Clontech was infringing US patents covering a reverse transcriptase enzyme used in the process of making cDNA from mRNA. The settlement was reached last week after a jury for the US District Court for the Southern District of Maryland sided with Invitrogen in the case.
 
Meanwhile, Invitrogen recently asked a US District Court in Texas to grant a stay in a case brought against the firm by Genetic Applications pending re-examination of the patent at the center of the litigation.
 
Clontech Settlement
 
According to a joint statement from the firms, as part of the settlement, Clontech agreed that Invitrogen’s patents at the center of the case are “valid and enforceable.” The companies said that Clontech has discontinued selling its RNase H minus reverse transcriptase products, including its PowerScript products, for the life of the patents.
 
All other terms of the settlement remain confidential. 
 
The settlement with Clontech, which is a subsidiary of Takara Bio, comes after the case made it to a jury trial a couple of weeks ago. The initial suit filed by Life Technologies alleged that Clontech was infringing US Patents No. 5,244,797 and 5,668,005, and later added No. 6,063,608 and 5,405,776. All of the patents are entitled “Cloned genes encoding reverse transcriptase lacking RNase H activity,” and were consolidated into one case, along with Clontech’s June 2000 complaint for declaratory judgment of non-infringement.
 
In previous rulings in 2003 and 2005, the district court and an appellate court, respectively, had found that Clontech’s manufacture, use, and sale of its PowerScript products had infringed various claims in Invitrogen’s patents.  
 
According to court documents filed earlier this month, Invitrogen said that it would seek a judgment of willful infringement by Clontech, which could have potentially tripled the amount of damages Invitrogen sought. The firm said it would “offer evidence that Clontech chose to use and sell PowerScript, and products made with or incorporating PowerScript, for the vast majority of its products while knowing of the patent.”
 
Invitrogen also noted that Clontech continued to sell the products after the rulings. However, the courts had declined to impose an injunction against Clontech, as sought by Invitrogen in 2001.
 
“Clontech may attempt to use this decision as evidence of its lack of willfulness,” said Invitrogen in this month’s filing. “However, it is well established that decisions on motions for preliminary injunctive relief are not final.”
 
Invitrogen argued, “Based upon the totality of the evidence, including evidence that Clontech actively and intentionally decided to develop a product to compete with Invitrogen’s SuperScript products, Invitrogen will ask the jury to find that Clontech had no good faith basis for its conduct.”
 
Invitrogen was seeking damages in the form of lost profits and an undisclosed “reasonable royalty” for Clontech’s alleged infringing sales of PowerScript products.
 
Seeking Stay in Genetic Applications Case
 
While the long-running patent dispute with Clontech came to an end, Invitrogen is locked in litigation with Genetic Applications, a privately held reagents and assay maker.
 
Genetic Applications initially filed a lawsuit in the US District Court for the Eastern District of Texas against Life Technologies in June 1999 alleging infringement of US Patent No. 5,670,347, entitled “Peptide-mediated gene transfer.” However, Genetic Applications chose not to serve the suit because Life Technologies filed a request to have the patent reviewed and reissued.
 

Invitrogen also said that it has not infringed the patents at issue and that “the plaintiff is engaged in improper, retaliatory, and bad faith conduct against this defendant.”

On Aug. 1, 2006, the US Patent and Trademark Office reissued the patent as No. RE39220. As a result, Genetic Applications filed suit against Invitrogen in October 2006 alleging that the firm infringed the reissued patent through the sale of its Plus Reagent, which is used to introduce DNA into the nucleus of living cells.
 
Genetic Applications also alleges that Life Technologies, and now Invitrogen, is aware of its infringement of the ‘347 and R’220 patents, and therefore its infringement should be considered willful and deliberate. Among other requests, the firm has asked the court to award triple damages due to this alleged willful infringement.
 
Last month, Invitrogen asked the court to stay the case pending the USPTO’s analysis of a re-examination petition filed by Invitrogen regarding the R’220 patent.
 
In answering Genetic Applications’ allegations, Invitrogen wrote in a court filing last month that it “denies Life Technologies was put on notice on June 25, 1999 of the ‘347 patent.” In addition, Invitrogen provides many affirmative defenses, among them a statement that “claims of the asserted patents are invalid for failure to meet the conditions of patentability.”
 
Invitrogen also said that it has not infringed the patents at issue and that “the plaintiff is engaged in improper, retaliatory, and bad faith conduct against this defendant and thus plaintiff’s recovery herein is barred or should be reduced proportionately to reflect such conduct.”
 
Invitrogen also is engaged in ongoing legal disputes with Stratagene, which has appealed a $16.2 million award granted last year to Invitrogen in a patent-infringement case (see BioCommerce Week 11/1/2006).
 
A separate suit filed by Stratagene alleges that Invitrogen is infringing a patent covering polymerase blends. In a conference call in March, Stratagene officials said they had been notified by the patent office that the firm’s patent at the center of the case would be reinstated with retroactive effect ( see BioCommerce Week 3/7/2007). Stratagene is hoping this may give the firm some leverage in potential settlement talks with Invitrogen.
 
It remains to be seen whether the patent reinstatement or Stratagene’s pending acquisition by Agilent (see BioCommerce Week 4/11/2007) will have any effect on the litigation between the firms.

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