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PacBio Named Senior Party in USPTO Interference Involving VisiGen Patent

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This article has been updated from a previous version to include comment from Pacific Biosciences.

Pacific Biosciences said last week that it has been named the senior party in an ongoing US Patent and Trademark Office interference that involves a patent held by Life Technologies and a patent application filed by PacBio that both cover single-molecule sequencing technology.

PacBio and Life Technologies are developing potentially rivaling real-time, single-molecule sequencing platforms, and the USPTO's interference shows that the two companies are claiming ownership to related intellectual property.

The agency's decision to declare PacBio the senior party appears to put it at an advantage because, typically, the senior party in a patent interference has a greater chance of prevailing, according to industry experts (see In Sequence's sister publication, GenomeWeb Daily News, 11/21/2006).

According to the USPTO, an interference is a "contest between [a patent] application and either another application or a patent" that the USPTO declares in order to determine which party holds priority, or was the first to invent the technology in question.

An interference can be suggested by a patent applicant or by a patent examiner, though it was not immediately clear whether PacBio or the examiner of its patent application suggested the interference in this case.

The interference in this case, which the USPTO declared in late December, involves a 2008 patent assigned to VisiGen Biotechnologies, a Houston-based startup that Life Tech division Invitrogen acquired for $20 million last fall (see In Sequence 10/28/2008). It also involves a patent application from Lincoln, Neb.-based Li-Cor, which sold sequencing-related technology to PacBio last summer (see In Sequence 6/3/2008).

In its original declaration, the USPTO named as the senior party Susan Hardin and colleagues, the inventors on the VisiGen patent, and named as the junior party John Williams, the inventor on the Li-Cor patent application.

But last week, PacBio said the USPTO had switched this designation "upon patent priority dates that precede the Life Technologies filing by nearly 20 months."

"The interference was redeclared to accurately reflect that PacBio/Williams is the senior party," a PacBio spokeswoman told In Sequence last week.

VisiGen's patent, US Patent No. 7,329,492, entitled "Methods for real-time single molecule sequence determination," was filed in December 2004, and issued last February. USPTO documents show that it initially rejected the patent's claims, citing an earlier patent application by PacBio co-founder Jonas Korlach and colleagues.

The USPTO eventually granted VisiGen's patent, but only after the company's CEO and founder, Susan Hardin, showed in late 2007 that she had submitted a grant application to the Defense Advanced Research Project Agency before Korlach and colleagues filed their patent application in May 2000. That grant application detailed, among other things, the use of nucleotides labeled at the gamma-phosphate position in sequencing strategies.

The Li-Cor patent application, No. 11/459,182, entitled "A System and Method for Nucleic Acid Sequencing by Polymerase Synthesis," was filed in July 2006. Details about the application and its priority date were not immediately available, but the PacBio spokeswoman said it is a continuation application of US Patent No. 7,229,799, a 2007 Li-Cor patent entitled "System and method for nucleic acid sequencing by polymerase synthesis."

The application for the '799 patent is unavailable in a USPTO database, which lists patent applications published since March 2001.

VisiGen's IP, which includes another patent and a number of patent applications, is important to Life Tech's own effort to develop a real-time, single-molecule sequencer. After Invitrogen acquired VisiGen last year, CEO Greg Lucier said that the deal, "although small in nature, significantly enhances our intellectual property portfolio in this important area" and "complements our own work and increases our confidence that we will be the leader in the new genomics era unfolding before us."

Since 2000, VisiGen had been working on real-time, single-molecule sequencing technology that uses fluorescence resonance energy transfer for detection, a concept that Life Tech is currently pursuing for its third-generation sequencer in conjunction with its quantum dot technology (see In Sequence 3/24/2009).

Li-Cor's sequencing technology, which PacBio acquired last summer to complement its own single-molecule real-time sequencing effort, uses gamma-phosphate-labeled nucleotides.

PacBio CEO Hugh Martin told In Sequence at the time that "we need to make sure that we have all the intellectual property we need," but called the Li-Cor technology purchase "more opportunistic."

PacBio and Life Technologies declined to comment further on the interference since it is an ongoing legal proceeding.

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