Henry Huang, the Washington University virologist who sued Applied Biosystems and Caltech over claims that his name should have been listed among the inventors of the automated DNA sequencer, failed to prove his case, a judge decided in mid-February.
“In light of the fact that inventorship must be proved by clear and convincing evidence, this Court finds that Dr. Huang has not carried his burden proving that he was an inventor” of the disputed patents, wrote US District Judge Mariana Pfaelzer of the Central District Court of California in her decision.
Huang filed suit more than a year ago against Caltech, ABI, and the sequencer patent principals, contending that his work was the foundation of the DNA sequencer developed in Lee Hood’s Caltech lab and that his name was left off the ensuing patents.
Huang originally asked that most of the principals on the patents — Lee Hood, Mike Hunkapiller, Tim Hunkapiller, and Charles Connell — be removed and that the patents be amended to show Huang and existing principal Lloyd Smith as the sole inventors. He eventually narrowed that claim to seeking to have his name added to the patents, allowing the currently listed inventors to remain.
A critical issue for Huang during the lawsuit was collaboration. Defense attorneys argued that even if Huang had come up with ideas for the DNA sequencer, the fact that he never worked with the other inventors meant he didn’t actually contribute to the instrument.
Huang’s lawyer attempted to show that the sequencer’s invention rested on four core concepts, each of which was thought of by Huang during his time at Caltech. (Huang told Genome Technology in 2002 that the four pillars — the optical detection process, use of fluorescent dyes, four colors in a single lane, and software to capture the data and convert it to sequence reads — “are the key concepts that I had come up with pretty much before the summer of 1982.”)
One of the main challenges for Huang’s attorneys was the more than 15-year gap between the sequencer’s debut and Huang’s filing suit to claim it. Huang says that by the time Caltech and ABI announced the working sequencer in June of 1986, he assumed it was completely different from his efforts and didn’t review the patent.
Edward Reines, who represented Applied Biosystems and most of the patent holders, says, “The inventors and the parties involved are obviously heartened that the question about inventorship has been removed, and we feel that this clears the way for the inventors to take their rightful place in history.”
But it seems that the question has not in fact been entirely removed. Huang’s attorneys, who could not be reached for comment, are expected to appeal the decision. Judge Pfaelzer might have added some fuel to their fire by writing, “The Court found Dr. Huang to be a credible witness, and is not convinced that he had no role at all in the development of the technology at issue here.”
Meanwhile, MJ Research is still trying to overturn the patents through its own lawsuit against ABI and Caltech over many of the same issues — rightful inventorship of the sequencer and ownership of the patents, among others. The case was dismissed last November but is winding its circuitous way back to court on an appeal.