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Court Sets April 2012 Trial Date for Affymetrix vs. Illumina Array IP Ownership Suit

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By Justin Petrone

A US court has set the schedule for an intellectual property suit that could give Affymetrix and an independent inventor rights in two Illumina patents.

After a preliminary trial conference on June 8, Judge Stephen Crocker of the US District Court for the Western District of Wisconsin set a timetable for the suit that, barring delays or a settlement, will result in the two array vendors meeting for a jury trial on April 23, 2012.

Other key dates set in Crocker's June 10 ruling include the receipt of letters containing conditions upon which either party would settle the case by March 16, 2012; a discovery cutoff of March 23, 2012; and a final pretrial conference on April 19, 2012. According to the ruling, the parties involved have estimated that it will take between three and five days to try the case.

Affymetrix and inventor Gregory Kirk filed their complaint against Illumina in March (BAN 3/22/2011). In the document, they argued that Kirk aided Illumina in the development of the company's BeadArray platform and should be added as an inventor on US patent numbers 7,510,841, and 7,612,020. Both patents were central to two patent infringement cases that Illumina filed against Affy, which the same court dismissed last December (BAN 12/21/2010).

If the action is successful, it will give also Affy rights in the two Illumina patents. According to the March complaint, Affy 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 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.

Affy and Kirk aim to move the US Patent and Trademark Office to reissue certificates for the '841 and '020 patents that name Kirk as an inventor. They also argue that Illumina should bear their attorneys’ fees and costs and are seeking "other and further relief as the court may deem proper."

The suit has its origin in the cases that were dismissed in December. Affy and Kirk have claimed that in those prior suits, the court concluded that Affy "made a prima facie showing that Kirk is a joint inventor of the patents."

A hearing to determine whether the patents should be corrected was never held, as the case was dismissed on the grounds of noninfringement.

Affy and Illumina have a history of litigation. In January 2008, 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 (BAN 1/15/2008). Illumina did not admit liability as part of that settlement.


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

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