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PerkinElmer and Agilent Issue New Arguments in Mass Spec Patent Dispute

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Agilent and PerkinElmer have exchanged salvos in their ongoing mass spec patent dispute (GWDN 4/9/2012), with PerkinElmer submitting a brief opposing Agilent's motion to dismiss the case against it on grounds of insufficient standing and Agilent responding with a reply challenging several claims in the PerkinElmer brief.

In its initial complaint, filed in April in the US District Court for the District of Massachusetts, PerkinElmer alleged that Agilent infringes US Patent Nos. 5,686,726 and 5,581,080, entitled, respectively, "Composition of Matter of a Population of Multiply Charged Ions Derived from Polyatomic Parent Molecular Species" and "A Method for Determining Molecular Weight Using Multiply Charged Ions."

Both patents were issued to inventors John Fenn, Chin-Kai Meng, and Matthias Mann and were subsequently assigned to Yale University, which granted an exclusive license to the patents to Analytica of Branford, which PerkinElmer acquired in 2009.

Analytica entered into an agreement with Agilent in March 1997, granting Agilent a license to the patents. According to PerkinElmer's complaint, Agilent stopped making royalty payments required by this agreement after June 30, 2011, breaching the contract and leading to termination of the licensing agreement.

In order to bring an infringement suit in its own name, a licensee must possess "all substantial rights" to a patent, which, Agilent claimed in a motion to dismiss that it filed last month, PerkinElmer does not (PM 6/29/2012). This, Agilent said, means PerkinElmer does not have standing to file the suit unless Yale, the licensor, joins it.

PerkinElmer responded last week with an opposition to this motion to dismiss. In this filing, the company asserted that, contrary to Agilent's motion, it does have standing to file the infringement suit, arguing that: its agreement with Yale makes PerkinElmer the exclusive licensee of the patents in dispute; and that the agreement grants PerkinElmer "a broad right to sublicense" the patents – further establishing that it possesses "all substantial rights that are consistent with those of a patent assignee."

Agilent responded this week with a brief contending that because Yale has retained the right to "make, use, and practice" the inventions covered in the patents for noncommercial purposes and to bring its own infringement action if a licensee declines to do so, Yale has retained sufficient rights to require its participation in the suit. The brief also noted certain restrictions on PerkinElmer's ability to sublicense the patents that, Agilent said, also undermine its claim to possess the rights needed for standing.

In an interview last month discussing the case with ProteoMonitor, Randy Pritzker, a shareholder at Boston-based law firm Wolf Greenfield specializing in intellectual property, noted that while, "typically an exclusive licensee has [standing to sue for infringement] and a non-exclusive [licensee does] not… there is obviously grey area and a body of law that defines what substantial rights are and the criteria that would indicate whether substantial rights have been given."

The court has scheduled an initial scheduling conference for the trial for Aug. 14.

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