NEW YORK (GenomeWeb) – Roche's 454 business has sued Thermo Fisher's Ion Torrent, claiming the company infringes three patents it holds related to sample prep methods prior to sequencing DNA.
Roche is suing Ion Torrent for infringing US Patent Nos. 7,323,305; 8,748,102; and 8,765,380 — all of which relate to emulsion PCR, which both companies use in the sample prep processes for their respective sequencing technologies.
Thermo Fisher and Roche both declined to comment on the lawsuit. The suit was brought by 454, and does not name Roche as a plaintiff. Roche began the process of shutting down its 454 business in 2013, and said it would phase out the 454 sequencers by 2016.
According to documents filed with the US District Court for the District of Delaware, Jonathan Rothberg, previously CEO of Ion Torrent, was an inventor on all three patents and, the suit claims, "founded Ion Torrent to commercialize the technology he had assigned to 454." As such, Ion Torrent and Thermo Fisher (when it acquired the Ion Torrent technology) were aware that the emulsion PCR technology had been assigned to 454, the suit claims. In addition, 454 alleges that it drew the defendants' attention to its patents during the "course of licensing discussions that commenced as early as 2012."
In its suit, 454 claims that Ion Torrent's sample prep systems — including the Ion OneTouch 2 and Ion Chef — as well as its Ion PGM and Proton sequencing instruments, chips, library kits, and reagents all infringe on the three patents and that customers' use of those products infringe the patents. The products "have no substantial use other than for performing emulsion PCR and sequencing the products of emulsion PCR," the suit states.
Aside from patent infringement, 454 also claims that in 2004 Rothberg assigned all rights to the applications for the three patents to 454, and in founding Ion Torrent and developing the Ion Torrent sequencing technology, he breached that contract. According to the suit, because of this alleged breach of contract, Rothberg cannot challenge the validity of enforceability of 454's emulsions PCR patents.
In the suit, 454 is requesting compensatory damages, a permanent injunction restraining Ion Torrent from further infringing on the patents, a declaration that the infringement was "willful" and that damages should be increased up to three times the amount, and also a declaration that the defendants cannot challenge the validity or enforceability of the patents.