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Litigation Update: Several BCW Index Firms Remain Tied Up in IP-Infringement Suits

This story originally appeared in Biocommerce Week, a newsletter that has been discontinued.
Even though many firms in the BCW Index have settled suits against each other or have completed jury trials over the past year, several significant cases are ongoing.
Applied Biosystems is among the most active of the BCW Index firms on the litigation front, and recently filed a second suit against Illumina regarding ownership of three DNA sequencing-related patents. The firm also has legal disputes ongoing with Stratagene, Thermo Fisher Scientific, Michigan Diagnostics, and Enzo Biochem.
ABI Seeks IP Ownership Clarity
On May 31, ABI filed a suit in the US District Court for the Northern District of California against Illumina, its recently acquired Solexa unit, and former chief patent counsel over ownership of patents covering DNA sequencing technology.
The federal suit follows a similar suit filed in a California state court at the end of last year. In that suit, ABI claimed that its chief patent counsel had filed a patent application in 1995, but instead of assigning it to ABI, he bestowed it on ABI spinoff Lynx Therapeutics, his new employer, which later acquired Solexa.
The three US patents that sprang from the application — Nos. 5,750,341; 5,969,119; and 6,306,597, all entitled “DNA sequencing by parallel oligonucleotide extensions” — cover sequencing-by-ligation, the approach used by ABI’s SOLiD next-generation sequencer, which the company is currently shipping to early-access users.
ABI filed its federal case May 31 against its former employee and Chief Patent Counsel Stephen Macevicz, as well as Illumina and Solexa.
The company is seeking a declaratory judgment that “no Applied Biosystems action infringes these patents, and in that act, they belong to Applied Biosystems,” an ABI spokesman told BioCommerce Week sister publication In Sequence last week. “That’s what we are trying to achieve.”
In a written response to In Sequence, an Illumina spokeswoman reiterated last week that Illumina’s Genome Analyzer system uses a different technology, sequencing-by-synthesis, that is not covered by any of the patents at issue in the two actions.
The state and federal complaints are identical in large parts, but the new suit asks for a jury trial and adds Illumina, which acquired Solexa earlier this year, as a defendant. Also, ABI added a section entitled “Grounds for Declaratory Relief” in the federal suit that was not part of the state complaint.
The latest suit against Illumina is one of a handful in which ABI is currently engaged.
After settling a patent-infringement suit last year with Bio-Rad Laboratories and its MJ Research unit over thermal cycling technology, Stratagene remains the sole defendant in the case. Though Stratagene officials have said several times in the past that they would like to settle the case, motions for summary judgment and reply briefs are due this summer.
Agilent Technologies, which acquired Stratagene two weeks ago for roughly $250 million, has declined to comment on Stratagene’s outstanding legal issues (see BioCommerce Week 6/13/2007).
That suit has been joined by a similar patent-infringement suit filed in Europe last month by ABI against Stratagene (see BioCommerce Week 5/30/2007).
In early April, ABI parent Applera filed suit against privately held Michigan Diagnostics for allegedly infringing two ABI patents covering chemiluminescent-based kits for diagnostic and research uses.
ABI, along with its joint venture partner MDS Sciex, is also locked in a patent infringement case with Thermo Fisher Scientific unit Thermo Finnigan over patents covering mass spectrometry technology. That case is currently stayed while the US Patent and Trademark Office reexamines the patent at the center of the case.
ABI is one of several defendants in two cases brought in New York and Connecticut by Enzo Biochem against firms that it claims is infringing its patents covering methods and materials for detecting nucleic acid sequences. The Connecticut case includes as defendants only ABI and its Tropix subsidiary.

ABI is seeking a declaratory judgment that “no Applied Biosystems action infringes these patents, and in that act, they belong to Applied Biosystems.”

Last week, ABI submitted to the court a motion to compel the deposition testimony of Pennina Langer-Safer, a named inventor in the case. The court has yet to rule on that motion.
The New York case includes defendants Amersham (part of GE Healthcare), Molecular Probes (part of Invitrogen), PerkinElmer, Orchid Biosciences, Affymetrix, and Roche Diagnostics. Oral arguments in the New York case are scheduled to be heard in July by Judge John Sprizzo.
Other Cases
Last week, 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 a reexamination process by the US Patent and Trademark Office (see related article).
Agilent’s Stratagene subsidiary is in the process of appealing a $16.2 million judgment against the firm in a patent-infringement case filed by Invitrogen and has a related countersuit filed against Invitrogen ongoing. In addition, the firm recently served Bio-Rad with a suit alleging that Bio-Rad and its MJ unit are infringing Stratagene’s thermal cycler patents.
Meanwhile, Bio-Rad filed a patent-infringement suit in March against 4titude Ltd. and Phenix Research Products alleging that those firms have infringed Bio-Rad’s patents covering thin-well microplates.
PerkinElmer and Amersham sued each other in 2003 over patents covering high-throughput screening and cell analysis. The firms had been engaged in settlement discussions, but the case resumed last fall and is ongoing.
Sigma-Aldrich and licensing partner Oxford BioMedica have an ongoing suit filed last year against Open Biosystems for allegedly infringing a patent covering a lentiviral LTR-deleted vector. The court has yet to rule on Open Biosystems’ motion to dismiss the case.
Finally, in a closely watched case in the research tools space, Affymetrix won the first round in a patent suit it filed against Illumina. In March, a jury for the US District Court for the District of Delaware said that Illumina infringed all five Affymetrix patents at issue in the case and awarded Affymetrix $16.7 million in damages (see BioCommerce Week 3/14/2007).
However, that case includes other phases that have yet to take place, and Illumina officials have said they would appeal the jury’s decision and continue to sell the products that are the subject of the suit. The court has yet to hear Illumina’s defense of inequitable conduct by Affymetrix and counterclaims of tortious interference and unfair competition.
Julia Karow contributed to this article.

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