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Stratagene, Invitrogen File Separate Patent-Infringement Suits Against Bio-Rad

Stratagene and Invitrogen have filed separate patent infringement suits against Bio-Rad Laboratories in the past few weeks, accusing the firm of willfully infringing certain patents covering thermal cycler and nucleic acid amplification technologies.
 
Just months after settling a patent-infringement case with Applera and Roche, Bio-Rad will have to defend itself against these two new claims. Stratagene accuses the firm and its MJ Research unit of infringing its thermal cycler patents, while Invitrogen claims Bio-Rad infringes a patent related to nucleic acid amplification reactions.
 
Bio-Rad officials this week declined to provide comment on either case.
 
Stratagene’s Suit
 
Last week, Stratagene filed its complaint against Bio-Rad in the US District Court for the Southern District of California. The suit alleges that Bio-Rad and its MJ Research and MJ Geneworks units, which Bio-Rad acquired in August 2004, have infringed four of the firm’s US patents: Nos. 6,054,263; 5,779,981; 5,288,647; and 5,395,591.
 
The ‘263 and ‘981 patents are both entitled “Thermal Cycler Including a Temperature Gradient Block,” and were issued on April 25, 2000, and July 14, 1998, respectively. According to Stratagene’s complaint, Bio-Rad and MJ have infringed and continue to infringe those patents by selling gradient thermal cycler products including iCycler, DNA Engine, DNA Engine Dyad, DNA Engine Dyad Disciple, and DNA Engine Tetrad.
 
The ‘647 patent is entitled “Method of Irradiating Biological Specimens” and was issued on Feb. 22, 1994, while the ‘591 patent is entitled “Apparatus of Irradiating Biological Specimens” and was issued on March 7, 1995. Stratagene alleges that Bio-Rad’s products for irradiating biological samples, including but not limited to its GS Gene Linker UV, infringe those two patents.
 
Stratagene said in its complaint that Bio-Rad has willfully infringed all four patents, and therefore should be ordered to pay triple damages. The firm has demanded a jury trial and asked the court to permanently enjoin Bio-Rad from selling products that it believes infringe its patents. Stratagene also is seeking unspecified damages, prejudgment and post-judgment interest on damages, costs of the suit, and reasonable attorneys’ fees.
 
This is not Stratagene’s first legal tussle over thermal cycler patents. The firm is currently a defendant in a suit filed in November 2004 by Applera and partner Roche against several parties including Bio-Rad and Stratagene (see BioCommerce Week 11/18/2004). After a court last year ordered Bio-Rad to remove its and MJ’s thermal cycler products from the market, Bio-Rad settled the suit this past February and re-entered the market (see BioCommerce Week 2/15/2006).
 
According to recent court documents, Stratagene is engaged in settlement discussions with Applera.
 
Legal battles have taken their toll on Stratagene over the past year as the firm has been ordered by two different courts to pay triple damages — more than $37 million in total — in patent-infringement cases filed by Invitrogen and Third Wave Technologies. It has appealed both cases, and two weeks ago asked the Texas court overseeing the Invitrogen case to approve a bond of $11.5 million, which is significantly below the amount of $16.2 million awarded to Invitrogen (see BioCommerce Week 11/21/2006).
 
According to that court filing, Stratagene said an amount more than the requested $11.5 million “would unduly burden it financially, and may put Stratagene’s current creditors, including Invitrogen, at risk.”
 
Invitrogen’s Suit
 
In addition to the Stratagene complaint, Bio-Rad also faces a suit filed by Invitrogen earlier this month in the US District Court for the Southern District of California claiming that Bio-Rad and other unnamed defendants have infringed Invitrogen’s US Patent No. 5,945,313 entitled “Process for Controlling Contamination of Nucleic Acid Amplification Reactions.”
 

Both Stratagene and Invitrogen claim Bio-Rad’s infringement has been willful, and both plaintiffs are seeking awards of triple damages.

According to the patent’s abstract, “the invention relates to a method of incorporating an exo-sample nucleotide into the amplified product strands resulting from a nucleic acid amplification process. Once the product strands have been obtained and analyzed … the exo-sample strands can be selectively destroyed by acting on the incorporated exo-sample nucleotide.”
 
In its suit, Invitrogen claims that Bio-Rad sells DNA amplification kits that infringe that patent, which was issued to Invitrogen unit Life Technologies in August 1999. Among the products Invitrogen alleges infringe the patent are Bio-Rad’s iQ Multiplex Powermix; iTaq Supermix with ROX; and iTaq SYBR Green Supermix with ROX.
 
In addition to Bio-Rad, Invitrogen also listed “Does 1 though 5” as defendants in the suit, though it said the true names and capacities of these defendants is unknown. Invitrogen alleges “each of the Doe Defendants is responsible in some manner for the events and happenings … [and] each individually or as a group caused injuries and damages” to the firm.
 
Invitrogen asserts that Bio-Rad and the other defendants willfully infringed the ‘313 patent and willfully induced others to infringe the patent, which means they would be subject to paying treble damages. In addition, Invitrogen is seeking to have the case deemed “exceptional,” which would mean that the defendants would have to cover Invitrogen’s attorneys’ fees.
 
This lawsuit is the second patent-infringement case filed by Invitrogen against Bio-Rad in the past two years. In April 2005, Invitrogen claimed in a suit that a number of Bio-Rad's Criterion XT gels infringe three patents owned by Invitrogen: US Patent No. 5,922,185, No. 6,162,338, and No. 6,783,651 (see BioCommerce Week 4/28/2005).
 
The firms had been engaged in settlement discussions in that case but failed to come to an agreement by a deadline at the end of September. According to recent court documents, the court will issue a new schedule for filing reinstated motions for preliminary injunction and/or summary judgment after a Markman hearing scheduled for Jan. 8, 2007.
 
Meanwhile, Invitrogen is the defendant in a patent-infringement suit brought last month by Genetic Applications. The suit, filed in the US District Court for the Eastern District of Texas, alleges that Invitrogen and its Life Technologies business have been infringing the firm’s US Patent No. 5,670,347 entitled “Peptide-Mediated Gene Transfer,” and reissued as RE39220 this past August.
 
According to the complaint, Invitrogen’s PLUS Reagent, which is used to introduce DNA into the nucleus of living cells, infringes its patent. Genetic Applications also asserts that Invitrogen’s infringement has been willful and therefore is subject to treble damages.
 

Invitrogen officials declined to comment on either case.

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