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New Trial Date Set as Affymetrix vs. Illumina Array IP Suit Resumes


By Justin Petrone

A US court has set a new trial date for an intellectual property suit that could give Affymetrix and an independent inventor rights in two Illumina patents.

The two array companies are scheduled to meet before Judge Barbara Crabb in the US District Court for the Western District of Wisconsin on May 14, according to a Feb. 14 court order. The parties predict a three-day hearing for the case.

Affymetrix and inventor Gregory Kirk filed their complaint against Illumina in March 2011 (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 int December 2010 (BAN 12/21/2010).

If the action is successful, it will also give 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.

The court first set a date for a jury trial on April 23, 2012, last year, but in July it closed the case pending the outcome of an appeal of the cases that were dismissed in December. The US Court of Appeals for the Federal Circuit in September affirmed the dismissal of Illumina's patent infringement lawsuits, but did not address the ownership issues related to those patents.

That led Affy and Kirk to file a motion to reopen the case on Sept. 26, 2011. On Jan. 26, Judge Crabb granted Affy and Kirk's motion and the case was reopened.

According to the complaint, Kirk, a 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."

Illumina last week filed an answer to Affy and Kirk's complaint. In the document, filed on March 21, Illumina denied that Kirk is an inventor on either patent, and specifically denied that Kirk "thought of or conceived any invention claimed in the '841 or '020 patents, or any Illumina patent or application."

Illumina is seeking dismissal of Affy and Kirk's claims with prejudice with an adjudication that they should be entitled to no relief by the claims and a declaration that the inventorship of the '841 and '020 patent is correct. Illumina also is seeking attorneys' fees and costs, and " any other relief that the court deems 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.

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

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