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Complete Genomics Denies Infringing Illumina's Patents; Claims They are Invalid or Unenforceable

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By Julia Karow

Complete Genomics has filed a countersuit against Illumina in which it denies Illumina's claims that it infringes three of its patents and argues that all the patents' claims are either invalid or unenforceable.

Separately, the firm asked the court to move the case from the District of Delaware to the Northern District of California, "a more convenient venue" since both companies have their business headquarters in California.

Illumina filed suit against Complete Genomics in early August (IS 8/10/2010), shortly after Complete filed for an initial public offering.

In its complaint, Illumina alleged that the company's Complete Genomics Analysis Platform infringes three of its US patents: No. 6,306,597, "DNA sequencing by parallel oligonucleotide extensions;" 7,232,656, "Arrayed biomolecules and their use in sequencing;" and 7,598,035, "Method and compositions for ordering restriction fragments."

All three have been, or are currently, subject to reexaminations by the United States Patent and Trademark Office and are part of separate litigation between Illumina and Life Technologies.

In its complaint, Illumina asked for a jury trial, a declaration that the three patents are valid and enforceable, a preliminary and permanent injunction against Complete Genomics, damages for infringement, and reimbursement of attorney fees.

In its answer and countersuit, filed Sept. 23, Complete Genomics denied any infringement of "any valid or enforceable claim" of the three patents and said that Illumina is not entitled to "any relief whatsoever." Moreover, it counterclaimed that all three patents are either invalid or unenforceable.

Regarding infringement, Complete Genomics said it does not perform the steps of the method claims of the '597 patent or of the first claim of the '656 patent, and it does not use materials and methods cited in the third claim of the '035 patent.

With regard to the validity of the patents, Complete said that the first claim of the '597 patent — the only independent method claim — is invalid because it is anticipated by an earlier patent application, WO 95/04160, known as the "Southern reference." This was determined during an earlier patent lawsuit between Applied Biosystems and Illumina (IS 2/3/2009) during which the parties stipulated that the claim was invalidated by the prior application. In addition, Complete said, the '597 patent is invalid because it is "anticipated or rendered obvious" by a patent application filed in 1993 based on the work of its chief scientific officer, Rade Drmanac.

Complete Genomics added that the '597 patent is unenforceable because Illumina misled the USPTO during a reexamination of the patent last year, which led to an ex parte reexamination certificate earlier this year that confirmed the first claim, as well as other claims. Complete said that Illumina, through its attorneys, failed to inform the USPTO that it had stipulated the anticipation and invalidity of the first claim of the '597 patent during its litigation with Applied Biosystems.

As for the '656 and the '035 patents, Complete Genomics said they are invalid because they are anticipated by a number of scientific publications, patents, and patent applications. In response to an inter partes reexamination request by Life Technologies, the USPTO rejected these patents' claims in a non-final office action in May.

Complete Genomics also claimed that Illumina has violated the Sherman Act "by seeking to obtain and maintain market power in the relevant market by enforcing one or more patents that Illumina/Solexa knew were invalid."

The companies "have attempted to achieve monopoly power in genome sequencing technology by fraudulently obtaining the '597 patent through omissions and misrepresentations in connection with the ex parte reexamination of the '597 patent and then through bad faith efforts to enforce their fraudulently-obtained patent," according to the counterclaims.

In its countersuit, Complete Genomics demanded a jury trial and asked the court to dismiss Illumina's complaint, declare that it is not infringing the three patents, and to find that all three patents are invalid or unenforceable and that Illumina's claims are limited or barred by several doctrines.

Complete Genomics is seeking reimbursement of attorneys' fees and other costs, profits on its lost sales of services, treble damages under antitrust laws, and other relief as appropriate.

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