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Sigma-Aldrich, Enzo Biochem Settle Patent Suit; Six Other Defendants Remain in Case

Sigma-Aldrich and Enzo Biochem have settled a patent-infringement suit that Enzo and Yale University filed four years ago against Sigma and six other life science companies, the companies said this week.
Sigma becomes the first of the seven defendants to settle with Enzo and Yale University, following a Markman ruling in July in which both sides claimed the judge favored their interpretations. It is unknown whether the Markman ruling had any effect on Sigma’s decision to settle or whether it will encourage other defendants to settle.
While the terms of the settlement were not disclosed, Sigma said the settlement “will not have a material adverse effect on [its] consolidated financial condition, results of operations, or liquidity.”
The US District Court judge overseeing the case last week approved the settlement, stipulation, and order to dismiss all claims and defenses.
Sigma officials declined to comment further on the case or the settlement.
An Enzo spokesman said the firm would not comment on whether it is in settlement talks with any of the other defendants in the case. According to a statement issued by the firm following the Sigma settlement, “We continue to aggressively pursue our claims with respect to the remaining defendants.”
Since it first filed the suits in 2002 and 2003, Enzo has alleged that the defendants — including Sigma, GE Healthcare, Affymetrix, PerkinElmer, Orchid Biosciences, Molecular Probes (now part of Invitrogen), and Roche — by selling their reagent kits improperly, are infringing 15 claims of eight different patents. The parties participated in a Markman hearing to define the interpretations of those claims in July 2005.
Disagreeing Over Markman Ruling
In the Markman ruling, handed down two months ago, Judge John Sprizzo of the US District Court in the Southern District of New York ruled that Enzo could indeed proceed with its litigation against the seven biotech firms (see BioCommerce Week 7/26/2006). However, Sprizzo rejected many of Enzo’s interpretations of the eight patents, causing both Enzo and at least two of its opponents to claim a victory.
Enzo issued a statement at the time arguing that “the ruling supports Enzo’s position that hundreds of defendants’ products infringe certain Enzo patents” and “opens the door for Enzo to not only pursue its patent infringement claims, but, as importantly, to also aggressively pursue its claims that defendants breached their contractual obligations to Enzo.”  
A person familiar with Enzo’s position said after the Markman ruling that, although the court constructed many of the claims in a manner that could be seen as favorable to Enzo’s opponents, Enzo sees the ruling as positive to itself. The source, who wished to remain anonymous because he didn’t want to publicly comment on ongoing litigation, said this is particularly the case because the ruling left mostly intact a key patent in the suit, US Patent No. 4,994,373, entitled “Method and structures employing chemically-labeled polynucleotide probes.”

“We continue to aggressively pursue our claims with respect to the remaining defendants.”

Enzo’s counsel, Scott Bornstein of the New York-based law firm Greenberg Taurig, told BioCommerce Week sister publication BioArray News last month that the litigation is “more than just a simple garden-variety patent case,” and Enzo has some “very unusual and very strong contract claims against the defendants.”
According to Bornstein, the sooner Enzo can get the defendants to trial, the better it is for the company. He said that the judge had not set a trial date in any of the seven patent cases, but he hopes that Enzo will be able to get trial dates by next summer.
At least a couple of defendants in the case took issue with Enzo’s assessment of the Markman ruling.
“Among its allegations, Enzo contends that Roche's AmpliChip CYP450 test infringes Enzo's US Patent No. 4,994,373. However, Judge Sprizzo's order rejected Enzo's interpretations of both the testing format and the ‘soluble signal’ claimed by this patent, and instead agreed with interpretations by Roche Diagnostics and its co-parties,” Roche said in a statement released soon after Enzo‘s announcement.
“The Court adopted virtually all of the interpretations proposed by Roche Diagnostics and its co-parties relating to seven Enzo patents covered by the order,” the firm added.
PerkinElmer also took issue with Enzo’s statement. In an e-mail to BioCommerce Week, the company said, “We are pleased with the court’s decision, which favored us on every major issue.  We note that Enzo has already released a press release which, while not technically incorrect, seemingly portrays the decision in favor of Enzo. However, the decision actually rejected many of Enzo’s claim constructions.”
Officials from PerkinElmer and Invitrogen declined to comment this week on the case or the Sigma settlement, while other defendants could not be reached in time for this article.

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