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OGT vs. Nanogen Heads to Mediation; Mergen Defiant While Axon Is Talking

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The wheels of justice are slowing turning in the cases of Oxford Gene Technology vs. Nanogen, and Oxford Gene Technology vs. Mergen et al, the holiday surprise patent infringement lawsuits OGT filed in December in the US District Court in Wilmington, Del.

Oxford Gene Technology is the Oxford, UK-based company founded in 1995 to license and manage the patents of microarray pioneer Edwin Southern of Oxford University.

The lawsuits ask for jury trials, unspecified damages, and court orders stopping the defendants from using technology stemming from US Patent No. 6,054,270, “Analyzing polynucleotide sequences.” The patent was granted to Southern in April 2000 on an application filed in 1997.

According to court documents obtained by BioArray News, the suit filed against Nanogen on Dec. 18, 2002, has been slated for alternative dispute resolution with the two parties scheduled for a mediation conference on Aug. 8. Mediation is a voluntary and non-binding court-run process that is less formal than arbitration but with the same goal of working out a settlement or agreement.

Axon Instruments, a defendant in the second suit, told BioArray News that is “in productive discussions to reach a commercial resolution with OGT. We are optimistic that this litigation can be resolved to our mutual satisfaction.”

Oxford Gene Technology representative John Jarvis declined comment on the lawsuits in an e-mail message to BioArray News.

The OGT vs. Mergen case is still in its very early stages. 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.

That still leaves Axon; Mergen of San Leandro, Calif.; BD Biosciences Clonetech of Palo Alto, Calif.; PerkinElmer of Wellesley, Mass.; and BioDiscovery of Marina Del Rey, Calif., still active in the suit. Mergen has filed a counter claim.

“We are confident that we don’t infringe and that a jury will agree with us,” said Marc Pernick, a lawyer with the Palo Alto, Calif., office of Morrison and Foerster, who joins Shantanu Basu, a lawyer with a PhD in molecular biology, on the team representing Mergen.

BD Biosciences, PerkinElmer, and BioDiscovery declined comment on the case.

Pretrial Action

Typically, cases of this type can take as long as two years to wind through the first level of the federal court system. According to the court documents, the next step in the trial is a teleconference in June between the parties to discuss scheduling.

Thus far, other than the Genomic Solutions’ settlement, the action in the case has revolved on Axon Instruments seeking, and receiving, nine extensions of the time it had to answer the complaint that was served on Jan. 3. Axon finally answered the complaint on May 6.

The case is the latest shot in an ongoing IP dispute that has been one of the defining aspects of the microarray industry. OGT has been successful in defending what might be regarded as the keystone portfolio of microarray intellectual property. Licensees include Incyte, Rosetta, and Agilent Technologies. The firm’s biggest win was the March 2001 settlement of a multinational patent dispute with Affymetrix where the Santa Clara, Calif., GeneChip giant agreed to pay $19 million to OGT and to license OGT’s technology.

Some 27 US patents, including 20 owned by Affymetrix, reference the patent at the center of the action in the two suits filed in Delaware. According to the USPTO database, the patent description covers a method for analyzing polynucleotide sequences, known or unknown, using an impermeable support, e.g. a glass plate, to create an array of oligonucleotides.

Southern, the inventor of the Southern blot method for DNA identification and detection, first filed patents for his version of microarrays in 1988 in the UK, and, soon after, filed patent applications in the US and Europe. Through OGT, he received what is now called the Southern patent, European Patent No. 0373203, in August 1994.

Southern’s foundational US Patent, No. 5,700,637, “Apparatus and method for analyzing polynucleotide sequences and method of generating oligonucleotide arrays,” provides for a glass plate or other support that carries an array of oligonucleotides that can be hybridized to labeled complementary oligonucleotides under certain conditions.

Targeting the Industry?

The companies involved cover the spectrum of the microarray industry and some might say the lawsuit validates them as significant players. Mergen sells the ExpressChip DNA microarray, a pre-spotted oligo slide. BD Biosciences Clonetech sells the BD Transfactor glass array and the Ab 500 microarray. PerkinElmer sells the Micromax microarray systems, SpotArray printers, and instrumentation. BioDiscovery sells microarray analysis software, while Axon Instruments sells scanners.

The lineup of defendants in this case extends beyond infringement on the basis of manufacturing an infringing product, and would appear to be an effort by OGT to extract licenses, and royalties, from throughout the chain of use.

If OGT prevails in a jury trial, damages would accumulate.

— MOK

 

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