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Invitrogen Reaches Settlement with Bio-Rad in Patent Cases; Inks Synthetic Gene Alliance

This article has been corrected from an earlier version to reflect the settlement of both suits, not just one, between Invitrogen and Bio-Rad.
Invitrogen and Bio-Rad Laboratories have reached settlements in two patent infringement suits filed by Invitrogen alleging that some of Bio-Rad’s products infringed upon certain Invitrogen patents.
Invitrogen also signed a pact this week to distribute synthetic genes made by Blue Heron Biotechnology. The alliance marks Invitrogen’s initial foray into the synthetic biology market.
Bio-Rad Settlements
According to court documents made public last week, Invitrogen and Bio-Rad signed settlement agreements on Nov. 20. The terms of those settlements were not disclosed in the court documents, and neither firm has provided any details. However, a Bio-Rad spokesperson confirmed this week that the firms had settled both cases.
Both companies asked the US District Court, Southern District of California, San Diego Division, with whom the suits were filed, to dismiss the cases in light of the agreements. The firms also signed a patent licensing pact, according to court documents, though the terms have not been disclosed.
In one suit, Invitrogen alleged that a number of Bio-Rad's Criterion XT gels infringe three patents owned by Invitrogen: US Patent No. 5,922,185, No. 6,162,338, and No. 6,783,651 (see BioCommerce Week 4/28/2005).
All three patents are entitled "System for pH-neutral stable electrophoresis gel" and list Timothy Updyke and Sheldon Engelhorn as inventors. Two of the patents are assigned to Novel Experimental Technology, or Novex, a San Diego-based company specializing in pre-cast electrophoresis gels. Invitrogen acquired the company in 1999 in a stock deal worth about $50 million at the time.
Invitrogen, which said it has not licensed the patents to any other party, employs the technology in its line of NuPAGE gels, which are small-format pre-cast polyacrylamide gels used to separate proteins.
In the other settled suit, which Invitrogen had filed last month, Invitrogen alleged that Bio-Rad and other unnamed defendants had infringed Invitrogen’s US Patent No. 5,945,313 entitled “Process for Controlling Contamination of Nucleic Acid Amplification Reactions.”
Specifically, Invitrogen alleged that Bio-Rad sells DNA amplification kits that infringe that patent, which was issued to Invitrogen unit Life Technologies in August 1999. Among the products Invitrogen claims infringe the patent are Bio-Rad’s iQ Multiplex Powermix; iTaq Supermix with ROX; and iTaq SYBR Green Supermix with ROX.
Jumping into Synthetic Biology
Meanwhile, Invitrogen intends to rely on its complementary product offerings and market reach to establish its presence in the synthetic biology market, following an alliance forged this week with Blue Heron.
The firm already sells a variety of cDNA cloning products and claims to offer the market’s largest collection of pre-cloned cDNA and genomic DNA, but this agreement marks the first time Invitrogen will offer commercial products in the synthetic biology market. The collaboration is aimed at the growing number of researchers who are switching to synthetic genes from traditional clones.
Invitrogen said it will exclusively distribute Blue Heron's synthetic gene products. According to Invitrogen, the synthetic gene platform, called GeneMaker, made by Blue Heron can “synthesize any gene sequence,” making it “ideal for the synthetic biology market.”

“We see this as a strong catalyst to our cloning business.”

For Invitrogen, the alliance will enable it to enter a small but rapidly growing market for synthetic genes and will also provide an opportunity to sell its complementary cloning products, said Nathan Wood, vice president of cloning and protein expression at Invitrogen.
“If you look at how you manufacture synthetic genes, and how they go into our portfolio, you’ll see that we have products that help in that aspect,” said Wood. “Then also you would see that when you ship a synthetic gene, it is put into a cloning vector when it is shipped. So, we see this as a strong catalyst to our cloning business.”
Though the vast majority of researchers still use traditional cloning products, the synthetic genes do offer an advantage. “Synthetic genes are a method of targeting certain aspects of science in a very robust and efficient way,” Wood told BioCommerce Week. “The advantage is if somebody knows the gene they are looking for they can just build it up from scratch.”
Invitrogen said it believes the alliance will allow it to offer enhanced drug-discovery capabilities to its pharmaceutical and biotech clients.
He declined to provide a market estimate for the synthetic genes, but said, “We would be the biggest company in the market going into this collaboration.”
Other firms that are making synthetic genes include smaller players such as Codon Devices, Sloning, and Synthetic Genomics, which was founded by Craig Venter last year.
Through the agreement, Invitrogen will make an undisclosed investment in Bothell, Wash.-based Blue Heron in exchange for exclusive worldwide distribution rights for the firm’s synthetic gene products and services. The genes will be sold through Invitrogen’s BioDiscovery unit by both its specialist and general sales force.
The agreement also calls for the companies to co-develop new products and services, although Wood declined to provide more specifics about those plans.

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