A four-year-old patent-infringement suit brought by the Massachusetts Institute of Technology and E8 Pharmaceuticals against Affymetrix and its customer Navigenics is certain to carry on following a new legal move.
On Sept. 26, five days after a judge in the US District Court for the District of Massachusetts dismissed MIT and E8's claims in the case, as well as Affy and Navigenics' counterclaims, MIT and E8 appealed the decision to the US Court of Appeals for the Federal Circuit.
MIT and E8, a patent holding company based in Cambridge, Mass., first sued Affy in 2008, alleging that the array maker's genotyping chips infringed US Patent No. 6,703,228, "Methods and products related to genotyping and DNA analysis." (BAN 7/8/2008) Issued to MIT in 2004 and later licensed to E8,the IP covers the use of SNPs to perform high-throughput genome scans.
MIT and E8 expanded the suit to Navigenics a year later, arguing that the consumer genomics shop also infringed the '228 patent by using Affy's arrays in its service (BAN 5/26/2009). Life Technologies acquired Navigenics earlier this year.
The plaintiffs, however, were dealt two setbacks. First, the court dismissed E8 from the suit two years ago for lack of standing, after attorneys for Affy and Navigenics successfully argued that E8 was not being imminently harmed by the alleged infringement. And last month the results of a claim construction hearing that favored the defendants' proposed claims caused MIT to seek dismissal of the case, after the institute agreed that the accused products could not infringe its IP according to the constructed claims.
Now, MIT and E8 are appealing the 2010 decision that dismissed E8 for lack of standing, as well as the US District Court's claim construction order.
According to court documents, the '228 patent covers technology that "enables users to perform accurate, reproducible and cost-effective genetic analysis, using minute amounts of sample DNA and a small number of reactants to generate results that were previously impossible, even in specialized high-throughput centers using many thousands of different reactants."
The dispute between Affy and MIT over the patent has been ongoing for nearly a decade. Six months after MIT was granted the '228 patent, Affy filed a patent application claiming priority to an earlier 1994 application, according to the suit. Then, in March 2005, Affy filed new claims with the US Patent and Trademark Office asserting the patentability and ownership of the method claims in the ‘228 patent.