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Nanosphere, Eppendorf Settle IP Dispute

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Nanosphere announced on Tuesday after the close of the market that it has settled a patent dispute with Eppendorf for $4 million, and as a result acquired certain patents and the patent rights on a global basis.

Eppendorf also received a limited license to service its existing customers as part of the settlement. Licenses previously issued by Eppendorf to other companies and that relate to the purchased patents and patent rights remain in effect.

In a document filed with the US Securities and Exchange Commission, Northbrook, Ill.-based Nanosphere said that the patents pertaining to Tuesday's deal are US patent 7,321,829 and European patent EP1179180, which cover Eppendorf's Silverquant microarray technology.

German-based Eppendorf sued Nanosphere last October alleging it infringed on the patent 7,321,829. Two months later Eppendorf initiated an import ban against Nanosphere's Verigene and Verigene SP systems in any European Union country, saying the platforms infringed on the EP1179180 patent.

Eppendorf will now take "reasonable steps" to remove the importation ban on the Verigene platform within 30 days of receipt of the $4 million, to be paid in one lump sum, Nanosphere said in its SEC document.

The limited license granted to Eppendorf to service existing customers covers the two patents that were under dispute and are "non-exclusive, non-assignable and non-transferable, non-sublicensable, irrevocable, worldwide, fully paid-up, and royalty-free," according to the SEC filing. It covers Silverquant kits and reagents and lasts through March 31, 2011.

Eppendorf, however, can manufacture and sell any of its products, including Silverquant products, as long as they are "not knowingly sold" for use that would fall under the purview of the two patents.

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