NEW YORK (GenomeWeb News) – Invitrogen filed a suit this week against Oxford Biomedical Research and co-defendant Vanderbilt University regarding a patent licensing agreement entered into in 1996 between the defendants and PanVera, a firm that Invitrogen purchased in 2003 for $95 million.
Invitrogen filed the suit in response to a related suit filed by Oxford in a different jurisdiction, in which Oxford recently filed a motion claiming that Invitrogen owes the firm $173 million in damages for breach of the licensing deal inked between Oxford and PanVera.
The two suits center on US Patent No. 5,886,157, which was issued to a researcher at Vanderbilt University in 1999 and covers the expression and purification of human cytochrome P450. The license between PanVera and Oxford, which held an exclusive license to the Vanderbilt invention, was signed in September 1996. The license transferred to Invitrogen when it acquired the Madison, Wisc.-based firm.
According to Invitrogen’s suit, which was filed in the US District Court for the Western District of Wisconsin, disagreements between Invitrogen and Oxford arose soon after regarding several provisions of the licensing deal. Those disagreements culminated in Oxford filing suit against Invitrogen in October 2005 in a Michigan court alleging that Invitrogen had breached the terms of the licensing pact by not making certain royalty payments, not supplying Oxford with certain recombinant proteins, and not offering Oxford a 40 percent discount on products produced by Invitrogen and PanVera.
Nearly two years later, Invitrogen said, Oxford sent a letter to the firm claiming that the licensing agreement would not terminate until the ‘157 patent expires in 2016, a conclusion that Invitrogen disputes. Invitrogen responded to Oxford and told the firm in a letter that the agreement had already expired, on Sept. 11, 2007, pursuant to its terms.
Invitrogen alleges in its suit that “Oxford did not refute, respond to, or otherwise challenge the facts set forth” in its letter. Nonetheless, Oxford filed an opposition to Invitrogen’s motion for partial summary judgment in the Michigan case stating that Invitrogen’s license to the ‘157 patent would not terminate until 2016.
A month later, Oxford served Invitrogen with reports from its damages expert, in which it claimed a total of $173 million in damages resulting from Invitrogen’s breach of contract. Invitrogen said in its suit this week that the damages report contains no “factual or legal support for the proposition that the claims of the ‘157 patent cover the licensed materials, or that Invitrogen practices or infringes the claims of the ‘157 patent.”
Invitrogen has asked the court to declare that certain claims of the ‘157 patent are invalid because they fail to satisfy the conditions for patentability and to declare that “Invitrogen and PanVera have and do not currently practice, infringe, induce the infringement, or contribute to the infringement of any valid claim, if any, of the ‘157 patent.”
In addition, it has asked the court to declare that no patent has been issued to Vanderbilt that covers materials licensed to Invitrogen and that the licensing agreement that had been signed between the parties terminated on Sept. 11, 2007. It also has asked for the reward of attorneys’ fees.