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Court Upholds Illumina Victory in Scripps Research Institute Patent Battle

NEW YORK – The US Court of Appeals for the Federal Circuit on Thursday affirmed a decision by a lower court clearing Illumina of infringing an expired Scripps Research Institute patent associated with bead-based microarrays.

La Jolla, California-based Scripps owns US Patent No. 6,060,596, or the ’596 patent, which describes bifunctional molecules having certain properties. In December 2016, Scripps sued San Diego-based Illumina in the District Court of the Southern District of California, alleging that Illumina had infringed certain claims of the patent by "manufacturing, using, selling, and offering for sale BeadChip," part of a bead-based microarray technology, and other microarray products. 

Scripps said in court documents that the sales and manufacturing activities occurred in the US during the term of the patent and included BeadChips used in conjunction with Illumina's Infinium assay. It further added that the oligos attached to Illumina’s BeadChip and other microarray products contain a bifunctional molecule as described by the claims of the patent.

In April 2018, the District Court of the Southern District of California issued claim-construction rulings that addressed three specific terms in the patent related to the design of the bifunctional molecule and related linker molecule. In May 2018, Scripps and Illumina filed a joint motion stipulating that, under the claim-construction rulings, Illumina had not infringed the asserted claims. The district court granted the motion and entered a final judgment in Illumina’s favor. 

In June 2018, Scripps appealed the claim-construction rulings, and both parties agreed that the district court’s judgment should stand if the rulings involving the design of the bifunctional molecule were correct. 

The US Court of Appeals for the Federal Circuit this week affirmed the earlier judgment, without considering the district court’s construction of the 'linker molecule' phrase.