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Jury Trial Commences in Suit That Alleges Illumina's Array Products Violate Syntrix's IP

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A jury is considering whether Illumina has infringed the intellectual property of Syntrix, a company with whom the San Diego vendor discussed a potential business relationship more than a decade ago.

Trial of the case commenced last week in the US District Court for the Western District Court of Washington. In a Feb. 4 pre-trial order, Judge Benjamin Settle discussed the issues the jury must decide on, including Syntrix's claim that Illumina has willfully infringed its IP, as well as Illumina's counterclaim that Syntrix's IP is not valid.

Based in Auburn, Wash., Syntrix is a privately held therapeutics and genomics platform developer. Syntrix sued Illumina in November 2010, alleging the firm was guilty of patent infringement, trade misappropriation, breach of contract, and unjust enrichment by selling its Sentrix BeadChips and BeadArrays, among other products (BAN 11/30/2010). The latter three claims were dismissed earlier this year, after Judge Settle granted Illumina's motion for partial summary judgment in the case.

According to Syntrix's complaint, John Zebala, the firm's CEO and founder, filed a US provisional patent in 1998 and a utility patent in 1999 that describe its technology, which is related to synthetic matrices and arrays. Based on those applications, Zebala in 2005 received US Patent No. 6,951,682, "Porous Coatings Bearing Ligand Arrays and Use Thereof."

Syntrix further claimed that in 2000 it entered into a non-disclosure agreement with Illumina while the two firms engaged in discussions regarding a "potential business relationship." Under that agreement, Syntrix provided to Illumina a copy of the application that later was awarded as the '682 patent, as well as a multimedia presentation describing the technology.

Fewer than three weeks later, Syntrix noted in the complaint, 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.

According to Judge Settle's pre-trial order, Illumina claims that several patents, some of which it has licensed, anticipated the claims of Syntrix's IP, among them US Patent No. 6,023,540, "Fiber optic sensor with encoded microspheres," and US Patent No. 6,327,410, "Target analyte sensors utilizing Microspheres," which were filed in 1997 and 1998, respectively, and are held by Tufts University. Illumina co-founder and scientific advisory board member David Walt is listed as the lead inventor on both of those patents. BioArray News interviewed Walt about the origins of Illumina's array platform in 2009 (BAN 9/8/2009).

Syntrix said in its initial complaint that it approached Illumina in 2007 with the option to license the '682 patent, but Illumina did not take a license. 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. The US Patent and Trademark Office later issued a reexam certificate "confirming the patentability of all of the claims of the '682 patent, with only two minor amendments to those claims," although Illumina is questioning the patentability of those claims in the ongoing case.

According to court documents, Syntrix is seeking a permanent injunction enjoining Illumina from selling any products that are based on information provided to Illumina by Syntrix under the nondisclosure agreement; judgment that its '682 patent was duly and legally issued, is valid, and is enforceable; a judgment that Illumina has infringed the '682 patent; damages through verdict and post-verdict; and Illumina's payment of the cost of action and attorneys' fees. Illumina is seeking a declaration of non-infringement and that the '682 patent is invalid and thus unenforceable.

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