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Invitrogen IP Suit Against Harvard Dismissed; Seeks to Deny Genetic Applications Damages

This story originally appeared in Biocommerce Week, a newsletter that has been discontinued.
The US District Court for the Southern District of California last week dismissed Invitrogen’s patent suit against the President and Fellows of Harvard College at the request of both parties to the case.
Invitrogen filed its suit against Harvard this past May after the US Patent and Trademark Office had judged that the inventor listed on a patent owned by Invitrogen was not entitled to patent certain claims. The USPTO’s Board of Patent Appeals and Interferences had sided with the senior party, which licensed its patent to Harvard, in a patent interference case.
The senior party, Stanley Tabor and Charles Richardson, was assigned US Patent No. 5,614,365 on March 25, 1997. The patent covers DNA polymerase with a modified nucleotide binding site for DNA sequencing applications and was licensed to Harvard, with the US Department of Energy holding a non-exclusive license to the patent.

“Plaintiff’s tardy revival of a claim that it long ago abandoned has irreparably prejudiced Invitrogen.”

Invitrogen’s interest in the case stems from its September 2000 purchase of Life Technologies, which owned the rights to a patent application — 09/558,421 — covering certain mutant DNA polymerase enzymes. The patent application listed Deb Chatterjee, a Life Technologies employee, as inventor.
According to the Board of Patent Appeals and Interferences’ decision on the patent interference, which was entered by Invitrogen as an exhibit in its suit against Harvard, “the principal practical interest of the disputed enzymes is that they enabled the transformation of DNA sequencing by the ‘chain termination method’ from an expensive laboratory technique yielding results that could be difficult to evaluate into an inexpensive, powerful, and widely used analytical tool.”
Invitrogen had asked the court to reverse the board’s decision and enter a judgment against Harvard in the patent interference. But the court never had to make that decision as the two parties appear to have reached a settlement last week.
An Invitrogen spokesperson declined to comment on any aspects of the case, including whether the parties had reached an out of court settlement, or on specific Invitrogen products that encompass claims in the patents.
Seeking Judgment Against Genetic Applications
In a separate ongoing case, Invitrogen has asked a US District Court in Texas to bar Genetic Applications from recovering damages that may result from any alleged patent infringement during a time period in which the two firms did not hold common ownership of their respective patents at the center of the case.
San Diego-based 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.
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.
In its most recent petition to the court, filed two weeks ago, Invitrogen also asked the court to rule that Genetic Applications cannot recover damages from the firm because it failed to timely assert its rights under the ‘220 patent.
Genetic Applications had filed an initial suit against Life Technologies in June 1999, but that case was dismissed six months later. It then waited seven years to file the case against Invitrogen alleging infringement.
“That delay was unreasonable and inexcusable,” Invitrogen said in its most recent filing, accusing the firm of “laches,” or undue delay in asserting a claim in order to increase damages. “Plaintiff’s tardy revival of a claim that it long ago abandoned has irreparably prejudiced Invitrogen, and the court should grant partial summary judgment precluding Genetic Applications from recovering any damages prior to its filing the instant lawsuit.”
Invitrogen further asserts that the delay “has also caused Invitrogen economic prejudice as evidenced by the change in its economic position (increased sales of the two accused products) during the delay.” The two products to which Invitrogen is referring are the Plus Reagent and Lipofectamine Plus.
“A plaintiff may not ‘intentionally lie in wait watching damages escalate’ … which is precisely what Genetic Applications has done in this case,” said Invitrogen.
The filing is Invitrogen’s latest salvo in the case. In April, it asked the court to stay the case pending the USPTO’s analysis of a reexamination petition that it filed regarding the R’220 patent (see BioCommerce Week 5/30/2007).
In June, a US District Court in Texas denied Invitrogen’s motions for a protective order and a stay in Genetic Applications’ patent-infringement suit against the firm pending the outcome of the reexamination process (see BioCommerce Week 6/20/2007).
The court has yet to rule on Invitrogen’s latest motion to deny Genetic Applications any damages that may result from the case.
The firms are now scheduled to present evidence at a Markman hearing in December followed by a jury trial, currently scheduled for July 2008.

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