Though MJ Research’s much-buzzed-about lawsuit seeking to invalidate Applera’s key sequencing patents isn’t expected to see a courtroom anytime soon, spectators could get a sneak peek at a similar argument thanks to Wisconsin’s speedy trials.
Promega, a reagents and DNA testing company based in Madison, originally sued Applera for patent infringement and was answered by a countersuit charging Promega with infringing an Applera patent. Promega has responded by suing to invalidate the patent at issue. Fondly known as ’748, the patent is the third major installment in ABI’s sequencing estate, covering the reagents needed for the sequencing process and issued in 2001 to Lloyd Smith, Mike Hunkapiller, Tim Hunkapiller, Lee Hood, and Charles Connell.
Promega’s home-court advantage is significant, because Wisconsin is one of the few states that rely on the “rocket docket” — a system that fast-tracks every case, regardless of merit, which has given Promega v. Applera v. Promega v. Applera a starting date of November 18.
Promega VP and general counsel Brenda Furlow refuses to give away the argument for what she expects to be a jury trial, but says there are “a number of grounds” that could be used to declare the patent invalid, including previous work in the field that wasn’t acknowledged in the patent application, or an inadequate description of the patented item. (In its suit, MJ Research has charged that the inventors failed to list a key inventor, Henry Huang, and that they did not disclose previous work that they used for the patent.) “We’re attacking whether they really should have gotten the patent,” Furlow says.
A spokeswoman for Applied Biosystems says, “We continue to believe that we have a strong case against Promega in the area of fluorescent dye labeled PCR primers. We look forward [to] the successful resolution of the litigation.”
For Promega, which goes head-to-head against Applied Biosystems with its short-tandem-repeat-based paternity and forensic tests, winning this lawsuit would be quite a victory. It could also narrow the patent, if it isn’t invalidated: “We think this really is a patent about sequencing,” says Furlow, adding that Promega uses its reagents to detect STR patterns, not to sequence. But she’s not viewing this as a watershed case for the sequencing (or anti-Applera) community: “We haven’t really looked at the broader issue,” she says.
— Meredith Salisbury