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Invitrogen Sues Bio-Rad for Allegedly Infringing Novex IP

Seeking to defend its growing proteomics patent portfolio, Invitrogen sued Bio-Rad Laboratories earlier this month claiming that some of its electrophoresis gels infringe upon certain Invitrogen patents, BioCommerce Week has learned.

The suit, filed on April 8 with the United States District Court of the Southern District of California, alleges that a number of Bio-Rad's Criterion XT gels infringe three patents owned by Invitrogen: U.S. Patent No. 5,922,185, No. 6,162,338, and No. 6,783,651.

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 precast polyacrylamide gels used to separate proteins. In the court filing, Invitrogen said the technology has been "immensely successful."

The technology has several advantages over other electrophoresis gels, according to Invitrogen: The shelf-life of the gels is longer and they can separate a broader range of proteins.

In its suit, Invitrogen claims that Bio-Rad's Criterion XT gels contain "Bis-Tris," a chemical responsible for the neutral pH and thus for the properties of the gels protected by Invitrogen's patents. The company therefore claims the gels have been "eroding Invitrogen's market share in the PAGE gel market" since they were introduced in 2003. Bis-Tris NuPAGE gels, declined by 16 percent between 2002 and 2004, Invitrogen said in the court filing.

Invitrogen also maintains in its suit that Bio-Rad "is luring Invitrogen's current NuPAGE gel customers to switch to Criterion XT gels by [offering] cheaper prices (per samples) for those NuPAGE customer who will purchase Criterion XT gels."

Invitrogen, which said it believes the Criterion XT gels are "inferior" to its own product, is seeking a preliminary and permanent injunction to stop Bio-Rad from selling its offending gel products, as well as damages and attorney fees.

To speed up the process, Invitrogen on April 14 filed a so-called ex parte request asking the court for an early case management conference to set a date for an injunction hearing and approve a schedule. The request also seeks to expedite the discovery process that determines whether Bio-Rad infringes the patents.

Preliminary injunctions are rarely granted in patent cases because of the high legal standards that need to be met, Richard Warburg, a patent lawyer with Foley & Lardner in San Diego who is not involved with the suit, told BioCommerce Week. However, courts are often willing to grant requests of expedited discovery, he said.

Invitrogen cites several reasons why it sees a need for a swift injunction: Some users of electrophoresis gels cannot easily change brands or procedures once they have been approved by the FDA, for example.

In addition, Invitrogen believes Bio-Rad is about to launch a new gel product with a narrower format that will also infringe its patents.

Ron Hutton, Bio-Rad's treasurer, would not comment on the suit or whether or not Bio-Rad is planning to launch such a product.

Though Invitrogen's NuPAGE product line only contributes a "very small percentage" to its overall revenues, it is still "meaningful enough so we want to sue," Adam Taich, Invitrogen's vice president for investor relations, told BioCommerce Week.

Year-over-year revenues from Invitrogen's BioDiscovery products, which include electrophoresis systems and the NuPAGE gels, grew 7 percent to $149 million during the fourth quarter of 2004, and grew 18 percent to $591.4 million for the whole of 2004.

"It's not anything that would have a material impact on our business," Taich said. However, "if you let people infringe on your IP, you let them get away with it once, they will try to get away with it again. We spend a lot of money and time developing products and want to make sure that we are protecting against anyone that's infringing."

Bio-Rad also does not put a huge price tag on its Criterion XT gel product line. According to Hutton, "there are thousands of products in [our] life science [segment]; this is one of them. It's not a huge part; it's meaningful, but it's not huge." Revenues from Bio-Rad's Life Science unit, which markets the Criterion XT gels, grew 21.6 percent to $148.5 million in the fourth quarter of 2004, and grew 10.6 percent to $504.7 million for 2004.

— Julia Karow ([email protected])

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