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Life Tech Claims Victory in SOLiD-Related Patent Dispute with Illumina

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Life Technologies’ subsidiary Applied Biosystems appears to have won a two-year legal quarrel with Illumina over three patents relating to ABI’s SOLiD sequencing technology.

Last week, during the second phase of a two-part trial in the US District Court for the Northern District of California, the jury decided that the SOLiD technology does not infringe the last patent at stake (see In Sequence 1/27/2009).

It made its decision after the court had ruled earlier that the SOLiD technology does not infringe the other two patents, and found one of the patents to be invalid. This second phase of the trial dealt with infringement issues.

Two weeks earlier, during the first phase of the trial, the same jury had decided that the three patents in question belong to Illumina, not ABI (see In Sequence 1/20/2009). The jury was charged during that phase of the trial to decide who owns the patents.

But regardless of the outcome of the first phase, Life Technologies declared victory last week.

“The bottom line is that we won the case,” Alan Hammond, chief intellectual property counsel for Life Tech, told In Sequence last week. “As far as we are concerned, those patents are not relevant to our current platform, and from our perspective, they are not relevant to any future development or enhancement of our SOLiD system.”

As a result, he said, the outcome of the trial will have “absolutely no effect” on current or future SOLiD customers, who will continue to be able, for example, to purchase and use a SOLiD system or to have it serviced by Applied Bio.

Hammond explained that Life Tech only had to win one of the two phases of the trial. “We could have won phase one, or we could have won phase two, and still have won this case,” he said.

He said that appeals are possible, though as of Feb. 2 no appeals had been filed. Illumina did not respond to repeated requests for comment on the outcome of the trial for this article.

Hammond declined to comment on Life Tech’s legal strategy going forward, including whether the company will seek to appeal the ownership verdict, or whether it plans to license the patents from Illumina.

The dispute started in late 2006 when ABI sued its former IP counsel Stephen Macevicz and Solexa in a California state court (see In Sequence 1/9/2007). The company accused Macevicz of failing to disclose a patent application to the company that he filed in his own name in April 1995 while still an ABI employee. The company claimed that he should have done so as part of an employee invention agreement.

Later that year, Macevicz assigned the application to his new employer, ABI-spinoff Lynx Therapeutics, which merged with Solexa in 2005. Illumina acquired Solexa in early 2007.

The patent application resulted in three patents, now owned by Illumina: US Patent Nos. 5,750,341; 6,306,597; and 5,969,119. All three patents are entitled “DNA sequencing by parallel oligonucleotide extensions.”

ABI moved its suit to a federal court in 2007, and Solexa filed three counterclaims, accusing ABI of willfully infringing the three patents.

Last August, the judge ruled that ABI does not infringe the asserted claims of the ‘341 and ‘597 patents (see In Sequence 12/23/2008).

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During the first phase of the trial, the jury decided on Jan. 14 that Stephen Macevicz’s invention met the three criteria in his employee invention agreement that entitled him to keep the invention for himself:

He had to develop the invention on his own time; use no equipment, supplies, facility, or trade secret of his employer; and ensure that the invention did not relate to the business or anticipated R&D of his employer, and could not result from work performed by him for the company.

On Jan. 26, in a joint stipulation, Solexa said that claim 1 of the ‘597 patent is anticipated by another patent application, WO 95/04160, the so-called “Southern reference,” rendering this claim invalid.

ABI, for its part, stipulated that Agencourt Personal Genomics’ one-base-encoding sequencing platform — an early version of today’s SOLiD platform, which uses two-base-encoding — infringed claim 1 of the ‘597 patent.

During the second phase of the trial, the jury decided on Jan. 27 that Solexa had not proven that ABI or Agencourt Personal Genomics, the original developer of the SOLiD technology that ABI purchased in 2006, infringed claim 1 of the ‘119 patent. That claim relates to a specific nucleic acid probe chemistry.

ABI’s probes match all elements of that first claim, except for one: they use a sulfur link instead of a nitrogen-hydrogen link as detailed in the patent. The jury found that these two links are not equivalent, so ABI’s probes don’t infringe.

The jury further decided that ABI has not proven that claim 1 of the ‘119 patent is invalid for reasons of obviousness. ABI had claimed that the claim was obvious “to those of ordinary skill in the art at the time of invention” because of another patent and a scientific article.

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