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Appeals Court's Dismissal of Illumina Infringement Case Against Affy Could Impact BeadArray IP Suit


By Justin Petrone

The US Court of Appeals for the Federal Circuit has affirmed the dismissal of patent infringement lawsuits brought against Affymetrix by Illumina.

According to court documents, a court panel on Aug. 18 upheld an earlier decision by the US District Court for the Western District of Wisconsin that cleared Affy of infringing US Patent Nos. 7,510,841 and 7,612,020, which are owned by Illumina.

Further details about the recent judgment were not available. However, the appellate court's decision could influence the course of a separate lawsuit involving the patents brought by Affy against Illumina. That case, which was closed in July pending resolution of the appeal of the infringement suit, could give Affy a stake in the IP, which protects technology used in Illumina's BeadArray platform.

Rick Runkel, Affy's executive vice president, general counsel and secretary, said in a statement that the Santa Clara, Calif.-based microarray vendor is "pleased" with the Court of Appeals' agreement with the Wisconsin court's judgment that Affy "does not infringe the asserted patents."

Illumina in January appealed a December 2010 judgment by the Wisconsin Court, in which it dismissed two suits the firm had filed against Affy, its main rival in the array market.

The San Diego company filed the first of the two suits against Affy in May 2009, alleging that its automated GeneTitan platform and other products infringed the '841 patent, entitled, "Methods of Making and Using Composite Arrays for the Detection of a Plurality of Target Analytes" (BAN 5/4/2009).

Six months later, Illumina filed a second suit, alleging that GeneTitan, as well as Affy's GeneAtlas and ArrayStation and associated products, infringed the '020 patent, titled "Composite Arrays Utilizing Microspheres with a Hybridization Chamber" (BAN 11/10/2009).

Following the dismissal of that case in December by the Wisconsin court, Affy and inventor Gregory Kirk in March filed a complaint against Illumina with the same court, arguing that Kirk aided Illumina in the development of the company's BeadArray platform and should be added as an inventor to the '841, and '020 patents (BAN 3/22/2011).

If successful, the action would give Affy rights in the two Illumina patents, as it is a licensee of Kirk's alleged rights under the '841 and '020 patents, and also holds an "undivided, one-half interest" in Kirk’s rights in the IP.

According to the March complaint, Kirk, a Princeton University-educated physicist with experience in the biotech industry, provided assistance to Illumina at the time the BeadArray technology was developed but was not credited as an inventor on either of the patents in question.

In June, the court set a case schedule culminating in an April 2012 trial date. Last month, though, the same court closed the case, citing the pending appeal of the 2010 decision.

It is unclear if Affy and Kirk will now ask the court to reopen their case. E-mails to Affy and Illumina seeking comment were not returned.

Have topics you'd like to see covered in BioArray News? Contact the editor at jpetrone [at] genomeweb [.] com.

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