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Patents Huang Sues ABI for Sequencer Patent Credit

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By now, most people are familiar with the lawsuit MJ Research filed against Applied Biosystems, Caltech, and others charging that the four-color automated sequencer patent is invalid. Key to MJ’s argument is the claim that the people listed as inventors — Lee Hood, Lloyd Smith, brothers Mike and Tim Hunkapiller, and Kip Connell — knowingly left off the name of Henry Huang, now a virologist at Washington University, who should have been listed as an inventor on the patent.

By MJ’s estimates, each of the principals on the patents has raked in more than $1 million in royalties from a series of Caltech-owned patents covering the technology. When MJ filed its suit in September 2000, Huang did not take legal action himself, and stood to gain nothing.

But in mid-February, Huang, a Hong Kong native who worked in Lee Hood’s Caltech lab from 1977 to 1982, filed his own complaint against ABI, Caltech, and all the principals on the patents. The change, Huang says, came after learning more and more about what he now believes was a deliberate action from the listed inventors to keep his name off the patent. “I saw more of the evidence that made it pretty compelling,” he says.

Neither Huang’s nor Caltech’s attorneys could be reached for comment.

As GT reported last year, Huang spent much of his time in Hood’s lab trying to design an automated DNA sequencer. He experimented with various techniques but never built a functional instrument before leaving for a teaching position at WashU.

By the time Caltech and ABI announced their working sequencer in June 1986, Huang assumed it was completely different from his efforts and didn’t even review the patent at the time. Now that he’s looked into it, the main points of the patent — optical detection process, fluorescent dyes, four colors in one lane, software to capture data and convert it to sequence — “are the key concepts that I had come up with pretty much before the summer of 1982,” Huang said last year.

The kicker is that the invention disclosure for the automated DNA sequencer, listing the Hunkapillers and Smith as inventors with Hood as a witness, was signed less than a month and a half after Huang’s departure from the lab.

Tim Hunkapiller has said numerous reviews have satisfied investigators that the invention is rightfully theirs.

If Huang wins his lawsuit, it would mean more than a loss of money for ABI and the patent holders. Huang’s work relied on federal funds, which at the time meant that any inventions of his would have belonged all this time to the federal government.

“They knew that Henry invented the sequencer before the Bayh-Dole Act and therefore the government owned the whole thing,” said Allen Foster, attorney for MJ. “They didn’t want Henry’s name anywhere close to it. … By the time they filed that invention disclosure, they were very aware that this was going to be big.”

— Meredith Salisbury

 

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