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Court Sides with Most of Life Tech's Proposals for Claim Terms in Illumina Patent Suit


By Julia Karow

This article, originally published Dec. 16, has been updated with additional information.

A District Court judge last week ruled on claim construction for Life Technologies' and Illumina's ongoing patent lawsuit regarding their next-generation sequencing systems, siding with Life Tech for the vast majority of terms where the plaintiff and the defendant offered different interpretations.

The legal quarrel started in the fall of 2009, when Life Technologies and its Applied Biosystems unit, together with the Institute for Protein Research and three individuals, sued Illumina in the US District Court for the East District of Delaware, alleging that its Genome Analyzer infringes three patents that Life Tech licenses, US Patents No. 5,616,478, 5,958,698, and 6,001,568, which relate to DNA amplification (IS 9/29/2009).

Shortly afterwards, Illumina denied Life Tech's allegations and countersued Life Tech, claiming that its SOLiD system infringes four of its patents, US Patent No. 6,654,505, 6,831,994, 7,232,656, and 7,598,035, which relate to sample preparation, data gathering, and genome analysis (IS 10/20/2009). Last month, it filed an amended version of its counterclaims, the contents of which appear to be largely unchanged.

In response to the amendment, Life Tech filed counter-counterclaims last month, in which it alleged that Illumina's four patents are invalid, and that it does not infringe "any valid, enforceable claim" in them. Life Tech also said that due to an ongoing reexamination of the patents by the US Patent and Trademark Office, it has "intervening rights" to at least some of them, barring Illumina from seeking relief "at least in part." Further, Life Tech claimed that "one or more" claims of the four patents are "unenforceable due to prosecution laches."

This spring, at Life Tech's request, the USPTO reexamined Illumina's four patents and rejected all claims in two of them in a non-final office action (IS 5/11/2010). But the District Court judge, Robert Kelly, denied Life Tech's request to put Illumina's counterclaims on hold until after the USPTO has completed its reexamination, which could take several years (IS 6/15/2010).

In May, the parties filed their proposed claim constructions, and a hearing was held on July 26 to discuss 24 different terms used in the disputed patents.

In his ruling last week, Judge Kelly adopted Illumina's terms in three out of the 24 claims, proposed terms closer to Life Tech's in four cases, and adopted Life Tech's terms outright in the remaining 17 instances.

"We are pleased with the Court's decision construing the meaning of terms used in the asserted patent claims, and are gratified by the extent to which the decision agrees with Life Technologies' proposed interpretations of the claim terms," said a Life Technologies spokesperson via e-mail. "We look forward to further proceedings in our patent infringement lawsuit against Illumina."

Illumina declined to comment on the judge's order.

A two-week jury trial is currently set to begin on Nov. 7, 2011.

Have topics you'd like to see covered in In Sequence? Contact the editor at jkarow [at] genomeweb [.] com.

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