By Julia Karow
This story was originally published Jan. 10.
In the ongoing patent dispute between Illumina and Complete Genomics, the court recently declined Complete's request to relate the case to earlier litigation between Illumina and Life Technologies and assign it to the same judge, but reassigned the case to a US district judge instead of a magistrate judge at Complete's request.
Last month, the suit, filed by Illumina last summer, was transferred from the US District Court for the District of Delaware to the Northern District of California after Complete Genomics argued that both companies have their business headquarters in California (IS 12/21/2010). At that time, the suit was assigned to a magistrate judge and was to enter an arbitration program, with an initial case management conference scheduled for March.
But in late December, Complete Genomics said it did not consent to a magistrate judge and requested that the case be reassigned to a US district judge. In response, the court last week randomly assigned the case to Charles Breyer, a district judge in the San Francisco division of the district court. The new assignment vacated previously scheduled hearings.
Complete Genomics also asked the court in late December to declare the case related to an earlier suit, between plaintiffs Applera and Applied Biosystems — now part of Life Technologies — and defendants Illumina, Solexa, and former ABI counsel Stephen Macevicz, and to assign it to the same judge, William Alsup.
Complete argued that the two cases are related because they both involve Illumina and Solexa, and both include one of Illumina's patents, US Patent No. 6,306,597. In addition, both Complete Genomics' sequencing platform and Life Tech's SOLiD technology, which are accused of infringing the patent, involve sequencing by ligation. Also, the earlier litigation — in which both parties stipulated in 2009 that the first claim of the '597 patent is invalid — is "central to the key inequitable conduct allegation in the Complete Genomics litigation," Complete said in a court filing, so "a judge other than Judge Alsup would have to spend substantial time and effort reviewing the record to understand the context of the stipulation."
Last week, however, Judge Alsup ordered that the two cases are not related because the '597 patent "has since undergone re-examination resulting in the issuance of 12 new claims that now are asserted in the newer action," and because "the companies and products accused in the newer action are completely different from those in the earlier action." As a result, the case will remain assigned to Judge Breyer.
Have topics you'd like to see covered in In Sequence? Email the editor at jkarow [at] genomeweb [.] com.