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Court Refuses Life Tech's Request to Delay Countersuit as USPTO Reexamines Four Illumina Patents

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By Julia Karow

This story was originally published June 10.

The judge presiding over an ongoing patent lawsuit between Life Technologies and Illumina involving their respective next-generation sequencing platforms rejected a request from Life Tech last week to put Illumina's counterclaims on hold until the US Patent and Trademark Office has completed a reexamination of four Illumina patents.

The decision came after the USPTO granted Life Tech's request last month for an inter partes reexamination of the patents — US Patents No. 6,654,505; 7,598,035; 6,831,994; and 7,232,656 — and issued non-final office actions to reject all their claims as unpatentable (IS 5/25/2010).

Illumina had argued in a counterclaim that Life Tech's SOLiD technology infringes these patents, in response to Life Tech's original claim, filed last fall together with co-plaintiffs Institute for Protein Research and three individual patent holders, that Illumina's sequencing technology infringes three of its patents, US Patents Nos. 5,616,478; 5,958,698; and 6,001,568.

In its motion to stay Illumina's counterclaims, Life Tech had argued that the reexaminations are highly likely to result in final rejections of or changes to claims in Illumina's patents, and that proceeding with the countersuit would be "wasteful" and "practically difficult."

Illumina, on the other hand, said that completing the reexamination, including appeals, could take up to eight years, during which time it would be unable to enforce its patents if the suit was put on hold.

In his order, the judge, Robert Kelly, sided with Illumina, saying that it would not be wasteful to proceed with the counterclaims in court because if Life Tech fails to prove that Illumina's patent claims are invalid, that result will be binding in the reexaminations, and the patent office would be barred from rendering the claims invalid later.

While the USPTO's reexaminations "do have the potential for simplifying the issues pertaining to the counterclaim patents in this case," he said, this benefit would come "at the expense of placing the counterclaim on hold for years while the patent case set forth in the original complaint continues on."

Since the two sets of patents overlap to some extent, he said, and because the two parties are directly competing with their respective DNA sequencing platforms, "the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issues."

The case, which is proceeding in the US District Court for the District of Delaware, is set to go to trial in July 2011.