A San Francisco law firm recently asked the US Patent and Trademark Office to reexamine two microarray patents held by Oxford Gene Technology, a UK array company that was founded as a IP-licensing firm but has broadened its portfolio over the past two years to offer microarray-based products and services.
The law firm Fliesler Meyer filed the ex parte reexamination requests in mid-January on behalf of a client who wishes to remain anonymous, according to Anthony Craig, an attorney at the firm.
Arguing that several claims in each patent are covered by prior art, the firm asked the USPTO to reexamine US Patent No. 5,700,637, “Apparatus and Method for Analyzing Polynucleotide Sequences and Method of Generating Oligonucleotide Arrays,” and US Patent No. 6,054,270, “Analyzing Polynucleotide Sequences."
The likelihood of the USPTO granting the request is fairly high, according to a 2006 study in the North Carolina Journal of Law & Technology that found that 98 percent of ex parte reexamination requests filed in 2004 were granted.
Of all patents that were reexamined through 2003, the study found, 10 percent had all claims cancelled and 64 percent had some claims cancelled or limited.
The patent request opens a new chapter in OGT’s highly litigious history. The UK firm was founded in 1995 to protect the patent estate of microarray inventor Sir Edwin Southern and has battled over its IP with numerous array companies in US courtrooms and through the European Patent Office ever since.
This is the first time, however, that an ex parte reexamination request has been filed with the USPTO, a fact that will most likely keep the identity of Fliesler Meyer’s client anonymous throughout the process.
“Some people prefer to have issues about the validity and breadth of patent claims pursued within a court and my client has chosen to pursue this with a reexamination,” Craig told BioArray News this week.
Craig said his client believes that the claims in the ‘637 patent, considered to be a foundational OGT patent in the US, as well as the ‘270 patent, are too broad.
As an example of prior art, the reexamination request for the ‘637 patent, which was granted in 1997, cites the user’s manual for Applied Biosystems’ 380B Synthesizer version 1.0, published in 1985, among a number of other citations.
In an interview with BioArray News sister publication GenomeWeb Daily News last week Craig cited the ABI manual as example of the breadth of the OGT patent because its claims “encompass an instrument that was already on the market.”
The reexamination requests cite several other examples of prior art for both patents in question.
This week Craig said he expects the USPTO to make a decision on whether to reexamine the patent in around three months. If the USPTO decides to reexamine the IP, the ensuing dialog will be between OGT and the USPTO, and will include no other parties.
“This is simply a question that the owner OGT will pursue with the USPTO,” Craig said. “The reexamination will be carried out ex parte, and if they choose, OGT will be able to amend their claims. If the amended claims are found to be patentable by the USPTO, then [OGT] will still have a patent.”
“If they can’t amend their claims or they choose not to, [then] the USPTO would determine that they wouldn’t end up with a patent. But that whole process will go on between the USPTO and OGT,” he added.
If the USPTO accepts Fliesler Meyer’s request, Craig said that it is uncertain how long a potential reexamination could take, but based on history it is possible that it could be several years before a reexamination process is concluded.
While the notion of new limitations to OGT’s IP portfolio may sound like a dramatic shift in the array industry landscape, the reality is that OGT’s corresponding patents in Europe have undergone similar reexamination after opposition.
“Some people prefer to have issues about the validity and breadth of patent claims pursued within a court and my client has chosen to pursue this with a reexamination.”
For example, the ‘637 patent’s corresponding European patent, EP0373203, “Method and apparatus for analyzing polynucleotide sequences,” was opposed by numerous parties including Affymetrix, Nanogen, and Abbott Laboratories, but was maintained by the EPO after several claims were amended (see BAN 11/30/2001).
Additional lawsuits involving companies like Nanogen and Affymetrix ended up in mediation or, in Affy’s case, with a $19 million settlement in favor of OGT (see BAN 8/13/2003).
During Affy’s fourth-quarter earning’s call last week, Affy CEO Stephen Fodor acknowledged he was aware of the reexamination request, but that the company had “settled that some time ago” and that he wasn’t sure “it's all that relevant” to Affy.
Peter Hotten, director of licensing and business development at OGT, told GenomeWeb News that the company is “aware of this latest attempt to challenge our fundamental microarray patents in the US.”
He added that these patents “have been extensively litigated and licensed and their validity recognized.”
Hotten declined to provide further comment to BioArray News.
Fliesler Meyer’s Craig said that his client was aware of both the EPO cases as well as all prior litigation, but that the company had a “certain strategy” in pursuing the reexamination request now.
In addition, he noted that the firm argued in its reexamination request that “the claims that were issued in the EPO are not as broad as those that are issued in the United States.”