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Battle of Microarray Litigants: OGT Settles with Motorola; Enzo Fights On


Oxford Gene Technology has settled yet another patent-infringement lawsuit, this one with Motorola. The firms reached an agreement in mid-June to settle the case, which OGT filed in the US District Court for the Northern District of Illinois in December 2002.

Similar to OGT, Enzo Biochem has embarked on an aggressive campaign to protect its patents covering labeling and detection systems for microarray applications.

The OGT-Motorola suit, one of several filed that month by OGT as it took aim at rivals for alleged patent infringement, regarded Motorola's eSensor DNA Detection System, a biosensor system that Motorola obtained through its 2000 acquisition of Clinical Micro Sensors. Motorola officials declined to comment on on the terms of the settlement, or the case -- which was set to go to trial next week.

The eSensor is a component of Motorola's life sciences operations. The Schaumburg, Ill.-based semiconductor giant had developed and commercialized the CodeLink Bioarray System but decided to exit that business in July 2002, selling the technology to Amersham Biosciences, which is now part of GE, for $20 million (see BAN 8/2/2002).

OGT manages the IP of microarray pioneer Edwin Southern, a biochemistry professor at Oxford University, who jointly owns the patents with Oxford University. The company holds a broad patent in the United States covering oligonucleotide arrays, and it has not hesitated to protect that patent.

While this clears one case out of the way for OGT, it still has patent suits pending against Mergen of San Leandro, Calif., and Sunnyvale, Calif.-based Telechem International regarding their microarrays. Philip Rovner of the Wilmington, Del.-based law firm of Potter Anderson and Corroon represents both Mergen and Telechem. He told BioArray News this week he could not comment on either case or whether his clients were engaged in negotiations to settle the cases.

Telechem officials also would not comment on the case, which includes a countersuit against OGT. But a Telechem spokesman said, "As far as OGT goes, we appreciate their contribution to the field, and we respect Dr. Southern for his wonderful contribution to the field of array technology."

Telechem sells the ArrayIt brand of microarrayers, while Mergen sells the ExpressChip DNA microarray.

OGT's attorneys did not return calls for comment on these cases.

UK-based OGT has aggressively pursued legal actions against a wide array of companies for patent infringement, and over the past 14 months it has settled with several competitors, including Nanogen, Genomic Solutions, Axon Instruments, and BioDiscovery. In each of these cases, financial details of the settlements were not disclosed, though Genomic Solutions said that as part of its settlement it would display notices in connection with marketing certain genomic-related products, and would pay OGT a "nominal amount."

In addition, privately held OGT previously licensed patents to Agilent Technologies and Amersham. In 2001, it settled several suits with market leader Affymetrix, and last month the firms announced that Affymetrix would pay $62.5 million to OGT as a buyout on royalties (See BAN 6/16/2004).

Enzo Takes Aim

Farmingdale, NY-based Enzo has sued several of its distributors for alleged patent infringement and improper distribution of its products for use in authorized applications.

An Enzo Biochem spokesman declined to comment on the pending cases or the patents at issue.

Affymetrix is embroiled in an acrimonious dispute with Enzo Biochem dating back to October 2003. Among the charges made by Enzo in that case are that Affymetrix improperly distributed to third parties certain of the firm's assets, including detection reagents and reagent systems, and improperly persuaded collaborators to use Enzo's products in unauthorized fields.

The dispute, which is currently wending its way through the US District Court for the Southern District of New York, includes a countersuit by Affymetrix that alleges that certain of Enzo's patents are not valid, and that it had not infringed Enzo's patents. The suit also seeks declaratory relief that Affymetrix had not violated the terms of the companies' agreement.

Affymetrix is not the only high-profile microarray player to be targeted by Enzo's legal efforts. UK-based Amersham and its US subsidiary Amersham Biosciences were among several firms sued by Enzo in October 2002 for allegedly violating the terms of distribution agreements and infringing Enzo's patents. Other firms named in the suit include PerkinElmer and its PerkinElmer Life Sciences unit; Sigma-Aldrich and its Sigma Chemical subsidiary; Molecular Probes, and Orchid Biosciences.

That case also is pending in the US District Court for the Southern District of New York. While the discovery phase is scheduled to close on Nov. 5, Enzo said in a recent US Securities and Exchange Commission filing that it expects the court to extend the deadline.

And on June 8, Enzo sued Applera and its Tropix subsidiary in the US District Court for the District of Connecticut alleging infringement of six patents (US patent numbers 5,476,928; 5,449,767; 5,328,824; 4,711,955; 5,082,830; and 4,994,373) related to DNA sequencing systems, labeled nucleotide products, and other technologies. Four of the patents were exclusively licensed to Enzo by Yale University, which is listed as a plaintiff in the case.

All of these actions have caused a surge in the company's legal expenses, which climbed to $1.3 million in the third quarter ended April 30, compared with $200,000 in the third quarter of 2003, according to Enzo's most recent quarterly filing with the SEC.



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