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USPTO Rejects Claims of Two Illumina Patents in Non-Final Action After Life Tech Reexam Request

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By Julia Karow

This article was originally published May 6.

Following a reexamination request by Life Technologies, the United States Patent and Trademark Office, in a non-final action, recently rejected all claims in two of four sequencing-related patents owned by Illumina that are at the center of an ongoing lawsuit between Life Tech and Illumina.

Illumina and predecessor Solexa had claimed in a countersuit filed last October against Life Tech and its Applied Biosystems unit that the SOLiD system infringes the two patents, US Patents No. 6,654,505 and 7,598,035; as well as two other patents, Nos. 6,831,994 and 7,232,656 (IS 10/20/2009). While the '994 and the '505 patents are both entitled "System and apparatus for sequential processing of analytes," the '656 patent covers "arrayed biomolecules and their use in sequencing" and the '035 patent relates to a "method and compositions for ordering restriction fragments."

Illumina's countersuit came in response to a suit filed a month earlier by Life Tech, ABI, the Institute of Protein Research, and three individual patent owners, who claimed that Illumina's sequencing technology infringes three related patents licensed to Life Tech (IS 9/29/2009). These patents, US Patents No. 5,616,478; 5,958,698; and 6,001,568, cover amplification and detection of DNA in a solid medium.

Later last year, the court, the US District Court for the District of Delaware, set a trial date for July 2011 (IS 11/17/2009). A claim construction hearing was later set for July 26, 2010.

In the meantime — between late 2009 and March 2010 — Life Tech asked the USPTO for an inter partes reexamination of all claims of the four Illumina patents, citing more than 10 prior art references for each patent.

In March, the patent office granted Life Tech's reexamination requests for the '505 and the '035 patents, and canceled all their claims in a non-final office action. Illumina has two months to respond to the USPTO's rejection of the claims, and Life Tech has another month after that to comment on the response.

Life Tech's reexamination requests for the '994 and '656 patents are still pending. As of press time, the USPTO had mailed non-final actions regarding both patents, but the documents were not yet available.

The company said in a court filing last month that it expects the patent office to grant those two reexamination request as well, and to reject the '994 patent claims, based on statistics about inter partes reexaminations and because the '505 and the '994 patents are related. Life Tech expects the USPTO to respond to its requests by May 19 and June 5, respectively.

Because of the ongoing review of the patents, Life Tech asked the court last month to suspend all proceedings in Illumina's countersuit "until the PTO Examiner has entered final decisions in the reexamination."

Life Tech argued that its four inter partes reexamination requests are "highly likely to result in changes or outright cancellation of the claims of the Illumina patents," citing statistics that show that more than 50 percent of such reexaminations result in all claims being canceled, and that only 8 percent of patents survive unmodified. "To go forward with claim construction and other proceedings in this case even as the PTO rejects or modifies the claims is both inherently wasteful and practically difficult," according to Life Tech.

Last week, in an opposition to Life Tech's request to put the countersuit on hold, Illumina said such a delay would deny it the right to enforce its patents against Life Tech for six to eight years or "until the four re-examinations and their inevitable appeals are fully resolved."

Recent USPTO statistics show that the average time to complete the first portion of an inter partes reexamination is about three years, which "does not include the years it takes to resolve the appeals filed by the losing party in a reexamination," according to Illumina.

Since both parties are competitors in the field of DNA-sequencing, Illumina argued, "Life Tech seeks to unfairly tilt the legal (and commercial) playing field by moving forward with its own case on infringement in an effort to stop Illumina from selling its market-leading sequencing machines, while concurrently denying Illumina any opportunity to prevent Life Tech from selling its infringing DNA-sequencing machines for many years."

Furthermore, putting its case on hold while allowing Life Tech to proceed "will likely discourage, rather than facilitate, settlement" between the two parties, according to Illumina.

As of press time, the court had not ruled on Life Tech's request to stay Illumina's counterclaims.

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