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University of Delaware Drops Patent Lawsuit against Phenomenex

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Separations science firm Phenomenex today said that the University of Delaware has dropped its lawsuit against the firm claiming patent infringement.

The case was officially dismissed on Feb. 2, Phenomenex said in a statement, adding that it came after the university informed the company that it would withdraw the case if Phenomenex would not countersue the school for legal fees.

The case, originally filed in December 2005, relates to US Patent number 5,599,625, entitled, "Products having multiple-substituted polysiloxane monolayer," which covers a process of chemical derivatization in liquid chromatography separation products.

According to its abstract the patent pertains to a protective monolayer, for example silica gel or glass surfaces, "comprising a monolayer of silicon and oxygen atoms which is substituted with first and second hydrocarbyl substituents."

The invention covered by the patent was developed by researchers at the University of Delaware, which licensed out the rights to market the technology to Research Corporation Technologies. The United States Patent and Trademark Office issued the '625 patent to RCT in1997. Four years later, RCT assigned the rights to the patent to the university.

In the meantime, Phenomenex reached an agreement with the university and RCT to use the technology covered by the '625 patent for research-use only.

In the complaint, the University of Delaware alleged, however, that Phenomenex marketed and sold its Jupiter line of HPLC columns, which incorporated technology covered by the '625 patent.

In a statement, Emmett Welch, senior manager of product development for Phenomenex, said the lawsuit by the school was "completely without technical merit. Phenomenex was completely cooperative and forthcoming throughout the litigation, and in the end the data unequivocally showed that in no way does Phenomenex infringe the university's patent."

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