Call it a December surprise. Oxford Gene Technology IP, Microarray pioneer Edwin Southern’s licensing firm, filed two separate patent infringement lawsuits against numerous array companies last month in a US district court in Delaware. In one action, filed on Dec. 18, 2002, the company began proceedings against Nanogen. In a second, filed on Dec. 23, 2002, the Oxford, UK, based company filed suit against Mergen, BD Biosciences Clontech, Genomic Solutions, PerkinElmer, Axon, and Biodiscovery.
The lawsuits ask for jury trials, unspecified damages, and court orders against the defendants to stop 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.
OGT officials were unavailable for comment.
OGT has successfully defended what may be regarded as the keystone microarray intellectual property portfolio. The firm’s biggest win was the March 2001 settlement of a multinational patent dispute with Affymetrix where the Santa Clara, Calif., company agreed to pay $19 million to OGT and to license OGT’s technology.
OGT was founded by Southern, a biochemistry professor at Oxford University, in 1995 to manage the intellectual property created in his labs. OGT technology licensees include Incyte, Rosetta, and Agilent Technologies.
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 compliment ary oligonucleotides under certain conditions.
The legal tidings came as a surprise to some companies on the summonsing end.
“We were shocked, it came out of the blue,” Jamie Love, director of business development for Mergen, told BioArray News. “We don’t know why we are on the list and don’t know how they developed that list.”
Mergen of San Leandro, Calif., sells ExpressChip microarrays, pre-spotted oligo arrays on a matrix-coated slide, for human, mouse, rat, and bacterial genomes.