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In New Court Filing, Illumina Claims Affy Hid Information That Could Invalidate IP

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Illumina last week filed an amended response to an Affymetrix complaint, responding to allegations of patent infringement by accusing Affy of "inequitable conduct," of having "unclean hands," and of violating federal antitrust legislation, according to court documents.

Illumina's response lays out a possible blueprint for how the company could seek to defend itself against Affy's allegation that its BeadChip technology and accompanying instrumentation violate six Affymetrix patents (see BAN 8/24/2005 for more information about this IP).

A source close to the litigation told BioArray News this week that the amended answer claims Affymetrix's suit is invalid because the company may have deceived the US Patent Office when it applied for the very patents it now claims Illumina is infringing on.

According to the source, inequitable conduct is "basically committing fraud," in this case on the patent office. Illumina is alleging that Affymetrix did not disclose prior work it was aware of when it filed the six patents in question, the source said.

Specifically, Illumina alleges that Affymetrix officials had prior knowledge of work done by Russian and Yugoslavian molecular biologists and informaticists similar to the technology claimed in the patents, yet "withheld material prior art" when applying for the patents, according to the amended response.

The source, who asked to remain anonymous because he represents one of the companies in the Affymetrix vs. Illumina suit, said that if Illumina's allegations of inequitable conduct hold up in court, each patent in question can be held unenforceable.

Building on that allegation, Illumina's argument that Affy is in violation of the Sherman Act, a 115-year-old piece of antitrust legislation, is based on the idea that Affy is using IP received improperly to "obtain a monopoly over the marketplace using patents obtained by fraud," the source said. If Affy is found in violation of the Sherman Act, Illumina could get triple damages for any sales it has lost due to the litigation.

Finally, Illumina has added its defense the charge of "unclean hands" to its response to Affy's original complaint. Illumina will now have the burden of proving that Affy has acted unethically and therefore cannot assert that Illumina is in violation of its IP.

Affy filed its suit in US District Court in July 2004, and a trial date has been set for October 2006. Depositions for the trial have already commenced, according to sources close to the litigation (see BAN 12/7/2005).

The judge in the case, which is proceeding in US District Court for the district of Delaware, where both Illumina and Affymetrix are incorporated, will now have until mid-January to accept or reject the revised answer to the complaint.

Representatives from Illumina and Affymetrix did not respond to phone calls seeking comment by press time.

— Justin Petrone ([email protected])

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