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Will Southern s Patent Blot Out Affymetrix?

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Struggling array-makers eagerly await the October 31 jury trial for Oxford Gene Technology’s patent infringement suit against Affymetrix. Oxford is seeking $300 million in damages, an injunction, and/or royalties. Regarding its Delaware court date, Affy will say only that the patent in question is just one of many covering arrays.

But this particular patent seems to be special: Agilent and Incyte have negotiated licenses and Affy has tried twice to acquire one.

The patent is held by Oxford and Ed Southern, the Southern in Southern blot, whom many consider to be the pioneer of nucleic acid hybridization methods. Depending on how the jury sees it, the broad claims on array technology in Southern’s patent could rob Affy of its right to make arrays.

Affy negotiated with Southern directly at first, but then, finding what looked like a back door, purchased Beckman Coulter’s microarray research program, which had a license, for a mere $10 million.

The move would have been a real coup for Affymetrix and a slap to Oxford considering that arrays are projected to become a multi-billion dollar biz in the next few years. But last April the English High Court ruled that Affymetrix had not gained rights to Oxford’s patent through its puny purchase on the grounds that the Beckman license was intended for research purposes.

An appeal hearing for the contract dispute in the UK is scheduled for October 18. According to Oxford’s attorney Chris Shelley, the appeal is unlikely to be successful because the case was decided based on the UK judge’s interpretation of the evidence presented. Shelley says the court of appeals is unlikely to question the judge’s interpretations unless Affymetrix can point out errors in law—and those will be hard to find as the case hinges on the judge’s opinion.

Assuming the appeal is denied, the October 31 Delaware trial is likely to uphold the UK court’s decision at the outset. As a result Affy will be stripped of its first infringement defense strategy, in which case it will likely fall back on trying to prove that Oxford’s patents are invalid due to prior art or other reasons. Considering Ed Southern’s status, it could be a weak strategy.

But Hollie Baker, senior partner and vice chairman of intellectual property at law firm Hale & Dorr, says Affy has time. “[Oxford] could get an injunction against Affy after the October 31 jury trial, but it will not be able to shut down Affy until and unless the appellate court also finds that Affy is infringing.” Baker adds that Affy could get around an injunction until the appeal is completed by paying a fee roughly equivalent to a reasonable royalty to Oxford.

—Christopher Maggos

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