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Syntrix Biosystems Sues Illumina for IP Infringement, Breach of Contract


By Justin Petrone

A new lawsuit filed by biotech firm Syntrix Biosystems accuses Illumina of IP infringement, trade misappropriation, breach of contract, and unjust enrichment by making and selling some of its microarray products.

Syntrix Biosystems filed its suit against the San Diego firm last week in the US District Court for the Western District of Washington. In its complaint, dated Nov. 24, Syntrix alleges that Illumina has based its array products on technology developed originally by Syntrix and provided confidentially to Illumina a decade ago while the two firms were discussing a possible business relationship.

Auburn, Wash.-based Syntrix is a privately held therapeutics developer. According to the suit, John Zebala, the company's president, CEO, and founder, filed a US provisional patent in 1998 and a utility patent in 1999 that describe the firm's so-called Syntrix 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."

In 2000, Syntrix entered into a non-disclosure agreement with Illumina while the two firms engaged in discussions regarding a "potential business relationship," according to the suit. 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.

Less than three weeks later, Illumina filed a provisional patent, titled " Alternative substrates and formats for bead-based array of arrays, which Syntrix said "contains figures and disclosures that closely resemble the trade secret Syntrix synthetic matrix and array technology" described in its discussions with Illumina. Zebala only became aware of Illumina's application in June of this year, the firm claimed in the suit.

Provisional applications are not examined by the US Patent and Trademark Office and automatically expire after a year, but subsequent applications can reference them in order to claim the benefit of the earlier filing date. In the case of the Illumina filing, US Patent No. 6,770,441, with the same title as the provisional application, was granted in 2004 and claims the benefit of the provisional filing. Several of Illumina's other pending patent applications also claim the benefit of the provisional application.

Syntrix alleges that a number of Illumina's products are in violation of its '682 patent, as well as the nondisclosure agreement it signed with the company in 2000. Specifically, the suit mentions Illumina's BeadChip, Array Matrix, HiScan, and Array of Array products. The suit notes that many of these products have been marketed under the name "Sentrix,", though it does not claim any infringement based on the similarity of the product line to its own name.

According to the suit, Syntrix 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 issued a reexam certificate in June "confirming the patentability of all of the claims of the '682 patent, with only two minor amendments to those claims."

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.

An Illumina spokesperson this week declined to comment on the suit. Representatives for Syntrix could not be reached for comment.

Have topics you'd like to see covered in BioArray News? Contact the editor at jpetrone [at] genomeweb [.] com.