Cornell Seeks to Rescind Settlement of Patent Dispute Against Illumina

NEW YORK (GenomeWeb) – A patent infringement lawsuit brought by Cornell and Life Technologies (now part of Thermo Fisher Scientific) against Illumina in 2010, and settled by the parties this past April, may be making its way back to the courts.

Cornell and Life Tech originally claimed that Illumina's microarray products infringed eight patents held by Cornell and exclusively licensed to Life Tech. The patents related to claims on detecting nucleic acid sequences using coupled ligase detection and PCR. In May 2016, the US District Court for the District of Delaware issued recommendations for claims reconstruction, and then partly adopted and partly rejected those recommendations in January, following comments by both parties. 

In April, both parties sought to have those prior rulings withdrawn. Cornell and Life Tech agreed to dismiss their claims against Illumina "with prejudice," and Illumina agreed to dismiss its counterclaims "without prejudice." Each party also agreed to cover its own legal costs. The court subsequently vacated its prior claims reconstruction recommendation and order.

However, Cornell and Life Tech this week were granted separate motions by the court to file exhibits for in camera, or private, review by the judge. Cornell's motion is further associated with a pending motion to vacate the settlement with Illumina based on what the university is alleging is fraudulent behavior on the part of both Illumina and Life Tech, its co-plaintiff.

In late June, almost two months after the case was settled, Cornell filed its first motion for leave to submit exhibits for in camera review, in association with a motion to vacate the joint stipulation to dismiss the claims against Illumina "based on fraudulent inducement" to settle the case. Cornell also sought rescission of the settlement itself, as well as rescission of "a sublicense agreement entered into between Life Tech and Illumina that was likewise part of the same fraudulent scheme."

The university further alleged in its filing that Life Tech had made a deal with Illumina behind Cornell's back. Life Tech "made misrepresentations to Cornell and concealed a broader settlement agreement with Illumina to fraudulently induce Cornell to execute the settlement agreement," the court filings stated. Cornell was seeking to submit documents to the judge for review that it said would prove its claims.

In further documents, which were filed on Aug. 31 and most of which are heavily redacted, Cornell provided additional rationale for its motion. In one filing, the university seemed to defend against Illumina's attempts to step away from the latest iteration of the suit. "Illumina tries to avoid the consequences of its conduct by asserting that this is a dispute between Cornell and Life Tech that can be resolved in a proceeding limited to those parties," the document read. After a redaction, it added, "Those remedies cannot adequately address the injuries caused to Cornell."

In another document, Cornell stated that while it believes it has submitted more than enough evidence to back up its motion for in camera review of exhibits, it asked the court for leave to conduct discovery if the court believed more evidence was needed. "This is especially the case because Life Tech has offered contrary facts on some key events," one unredacted part of the brief noted.

Judge Mary Pat Thynge on Sept. 14 granted Cornell's motion for leave to file exhibits for in camera review in association with its currently pending motion to vacate the stipulation of dismissal and to rescind the settlement for fraud, and granted Life Tech's own unopposed motion for leave to submit exhibits for in camera review.

Representatives for Illumina and Life Tech parent company Thermo Fisher, and lawyers for Cornell did not reply to requests seeking comment.

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