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Cases Closed: Wisconsin Court Dismisses Two Illumina IP Suits Against Affymetrix

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This story was originally published on Dec. 15.

By Justin Petrone

Two suits in which Illumina accused rival array maker Affymetrix of patent infringement were dismissed last week after the US District Court for the Western District of Wisconsin granted Affy's motion for summary judgment that it does not infringe the patents, according to court documents.

Specifically, the court has directed that the patent infringement lawsuits brought against the company by Illumina regarding US Patent No. 7,510,841 and No. 7,612,020 be dismissed and the cases closed.

Rick Runkel, Affy's executive vice president, general counsel, and secretary, said in a statement that the firm is "pleased" with the ruling, which "confirms our position that Illumina’s lawsuits were without merit."

Illumina filed the first of its two suits against Affy in May 2009, alleging that its automated GeneTitan platform and other products infringed Illumina's US Patent No. 7,510,841, 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 the GeneTitan, as well as Affy's GeneAtlas and ArrayStation and associated products, infringed US Patent No. 7,612,020, titled "Composite Arrays Utilizing Microspheres with a Hybridization Chamber" (BAN 11/10/2009).

In both cases, Illumina sought a judgment from the court that Affy had indirectly and directly infringed one or more of the claims of the patents and that each of the claims of the patents were valid and enforceable. It also sought a permanent injunction barring Affy from making and selling the named products, as well as a judgment that Affy had willfully infringed the patents and should pay triple damages as a result.

Following a claim-construction hearing this July, the court tacked closer to Affy's language in several cases, most importantly the definition of a "second substrate." Illumina interpreted the term to mean "a support," while Affy proposed "a material that is modified to contain discrete individual sites appropriate for the attachment or association of beads (small discrete particles) and is amenable to at least one detection method." The court's construction was closer to Affy's language, but differed slightly: "a material that can be modified to contain discrete individual sites appropriate for the attachment or association of beads and is amenable to at least one detection method" (BAN 7/20/2010).

According to court documents, it was the interpretation of the term "substrate" that led to the dismissal. District Judge Barbara Crabb ordered the cases closed on Dec. 14, on the basis that the "undisputed facts" show that Affy's "accused products do not include a 'substrate,' as required by each of the asserted claims" in the patents.

Additionally, she noted that Affy's microarrays do not use beads and referenced expert opinion that to affix beads to the surfaces of Affy's arrays would destroy the chips in the process.

As part of the court's order dismissing the cases, Crabb also dismissed Affy's counterclaims that Illumina's patents are invalid. However, Crabb dismissed the counterclaims "without prejudice to defendant's refiling them at a later date."

Financial details were not discussed in the dismissal.

Affy and Illumina have squabbled over array IP for years. Last week's dismissal of the suits comes nearly two years after Illumina paid Affy a one-time $90 million payment to settle multiple suits that Affy had filed in the US, Germany, and UK between 2004 and 2007 (see BAN 1/15/2008). Illumina did not admit liability as part of the settlement.

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