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Illumina Denies Its Arrays Infringe Syntrix's IP, Asks Court to Dismiss Case

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By Justin Petrone

In response to a patent-infringement suit filed last November, Illumina has denied that its BeadChips and certain other technologies infringe a patent held by privately held drug maker Syntrix.

Illumina has also asked the court to declare that the patent at the heart of the suit is invalid and to dismiss the complaint with prejudice.

The San Diego vendor filed its response and counterclaims Jan. 31 with the US District Court for the Western District of Washington. In the document, Illumina denied Syntrix's allegations that it had based its array products on technology developed originally by Syntrix and provided confidentially to Illumina a decade ago while the two firms were discussing a possible business relationship.

Auburn, Wash.-based Syntrix sued Illumina three months ago for alleged patent infringement, trade misappropriation, breach of contract, and unjust enrichment by making and selling certain microarray products that it claims use the IP (BAN 11/30/2010).

According to Syntrix's complaint, its CEO and founder John Zebala filed a US provisional patent in 1998 and a utility patent in 1999 that describe the firm's pseudonymous technology, which is related to synthetic matrices and arrays.

The following year Syntrix entered into a non-disclosure agreement with Illumina while the two firms engaged in discussions regarding a "potential business relationship," according to the suit.

In 2005 Zebala was awarded US Patent No. 6,951,682, "Porous Coatings Bearing Ligand Arrays and Use Thereof." As part of its 2000 agreement with Illumina, Syntrix gave the San Diego vendor a copy of the patent application as well as a multimedia presentation describing the technology.

Fewer than three weeks later, Illumina filed a provisional patent, entitled "Alternative substrates and formats for bead-based array of arrays. It was awarded a patent for the technology in 2004. The IP, US Patent No. 6,770,441, retained the provisional patent's name.

In its suit, Syntrix claims the patent "contains figures and disclosures that closely resemble the trade secret Syntrix synthetic matrix and array technology" described in its discussions with Illumina.

According to the suit, Zebala only became aware of Illumina's application in June 2010.

In its suit, Syntrix alleges that a number of Illumina's products violate its '682 patent as well as the firms' 2000 nondisclosure agreement. The suit names Illumina's BeadChip, Array Matrix, HiScan, and Array of Array products, some of which have been marketed with the brand name "Sentrix," Syntrix noted.

According to the suit, Syntrix in 2007 approached Illumina with the option to license the '682 patent, but Illumina refused. The following year a third party requested an ex parte reexamination of the '682 patent, and Syntrix said that it later learned that the third party was Illumina.

Syntrix added that the US Patent and Trademark Office issued a re-exam certificate in June "confirming the patentability of all of the claims of the '682 patent, with only two minor amendments to those claims."

Responding to Syntrix's complaint, Illumina admitted that it had engaged in discussions with Syntrix regarding the '682 patent in the past, but questioned Syntrix's claim that the USPTO reexamination certificate confirmed the patentability of all the claims of the '682 patent, with the two minor amendments.

It is unclear what the basis for Illumina's arguments is. The reexam certificate shows that the claims of the '682 patent were maintained, aside from two claims, which were maintained in amended form.

Illumina also argued that Syntrix's statement that it had requested the reexamination request was improper under the Patent Act because the "identity of an anonymous requester is confidential information."

Illumina also argued that it was not "necessary or appropriate" for it to license the '682 patent. The firm instead is seeking a declaratory judgment that it has not infringed the '682 patent, and that the patent is invalid.

The company is also seeking an award to cover attorneys' fees and other expenses in the action and "further relief as the court may deem just and proper."

Syntrix is seeking a permanent injunction preventing Illumina from selling any products that are based on information provided to Illumina by Syntrix as part of the nondisclosure agreement; a judgment that its '682 patent was duly and legally issued, is valid, and is enforceable; a judgment that Illumina infringes the '682 patent; damages through verdict and post-verdict; and Illumina's payment of the cost of action and attorneys' fees.