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BioDiscovery Settles with Oxford Gene Technology in Patent Infringement Lawsuit

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BioDiscovery, which sells microarray image analysis software, last week became the latest defendant to settle with Oxford Gene Technology in the series of patent-infringement lawsuits filed late last year.

The San Leandro, Calif., company is the third to settle out of 11 companies with microarray-related commercial activities sued in December by OGT, the intellectual property management firm created in 1995 to license and manage the patents of microarray pioneer Edwin Southern of Oxford University.

Both BioDiscovery and OGT declined opportunities to discuss the settlement beyond a statement issued on Oct. 21.

According to the statement, the terms of the settlement, which revolve around US Patent No. 6,054,270, allow BioDiscovery to continue selling its full line of microarray-image and data-analysis software, but do not give it a license to any OGT patents.

BioDiscovery’s software “may not be used to make any oligonucleotide arrays coming within the scope of any OGT patent or analyze polynucleotides using oligonucleotide arrays coming within the scope of any OGT patent or according to any method claimed in any OGT patent, unless the user has a license from OGT or uses arrays made by licensees of OGT,” the companies said.

The underlying patent in this case, 6,054,270, is entitled “Analysing polynucleotide sequences,” and was issued to Oxford Gene Technology in 1997, with Southern as the listed inventor. It broadly covers analysis of polynucleotide sequence in which “a support, e.g., a glass plate, carries an array of the whole or a chosen part of a complete set of oligonucleotides which are capable of taking part in hybridization reactions,” and in which the sequence or fragments “are labeled and applied to the array under hybridizing conditions.”

OGT filed three separate patent infringement suits in December. On Dec. 23 in Delaware US District Court, the company filed suit against BioDiscovery of Marina Del Rey, Calif.; Mergen of San Leandro, Calif.; BD Biosciences Clontech of Palo Alto, Calif.; PerkinElmer Life Sciences of Wellesley, Mass.; Axon Instruments of Union City, Calif.; and Genomic Solutions of Ann Arbor, Mich. The company also filed a patent infringement suit against San Diego-based Nanogen on Dec. 18, also in Delaware, and against Motorola over its eSensor electronic arrays in US District Court for the Northern District of Illinois on Dec. 13. Mergen filed a countersuit on Feb. 20 while Nanogen filed a counterclaim on April 4. The company and OGT are in court-ordered mediation, a voluntary and non-binding court-run process that is less formal than arbitration.

In May, Genomic Solutions, a subsidiary of Harvard Bioscience of Holliston, Mass., announced that it had settled with Oxford Gene Technology and would pay an undisclosed “nominal amount” as well as display notices on any genomic-related products that it sells. Both Genomic Solutions and Axon Instruments have posted notices on their websites.

BioDiscovery has not made a similar notice, but has posted the press release relating to the settlement, which contains similar wording.

Oxford Gene Technology v. Motorola is scheduled to go to trial on July 19, 2004, while the other two suits, in the US District Court of Delaware, are scheduled to go to trial in early 2005, according to court documents.

— MOK

Recent OGT Litigation Stories in BioArray News

  • OGT Lawsuits Slated to go to Trial in 2004, 2005; Company and Nanogen in Mediation [BAN 8/13/2003]
  • OGT’s Peter Hotten on Microarrays and Intellectual Property [BAN 8/13/2003]
  • Add One More Defendant to OGT’s List: UK Firm Sues Motorola Over eSensor Biochip [BAN 7/23/2003]
  • Axon Becomes Second Microarray- related Firm to Settle Out of Court with Oxford Gene [BAN 6/25/2003]
  • OGT vs. Nanogen Heads to Mediation; Mergen Defiant While Axon Is Talking [BAN 6/4/2003]
  • Oxford Gene Technology Files Suits Against a Wide Array of Companies [BAN 1/3/2003]

 

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