NEW YORK (GenomeWeb) – Enzo Biochem said today that it has reached a settlement with Thermo Fisher Scientific's Life Technologies business on two patent infringement lawsuits.
Thermo Fisher will pay Enzo $35 million to settle the claims Enzo filed in Delaware Federal District Court in 2012. Enzo claimed Life Tech infringed on two patents — No. 6,992,180, entitled Oligo- or Polynucleotides Comprising Phosphate Moiety Labeled Nucleotides, and No. 7,064,197, entitled System, Array and Non-Porous Solid Support Comprising Fixed or Immobilized Nucleic Acids.
According to the '180 patent abstract, the invention pertains to a nucleotide comprising a phosphate moiety, sugar moiety, and a pyrimidine, purine, or 7-deazapurine moiety. Also provided is an oligo- or polynucleotide "comprising at least one such phosphate-moiety-labeled nucleotide, and other compositions, including those wherein a polypeptide is terminally ligated or attached to the oligo- or polynucleotide."
Enzo's lawsuit against Life Tech alleged infringement by products based on TaqMan probes, as well as TaqMan Gene Expression assays; TaqMan SNP Genotyping assays; TaqMan Protein assays; TaqMan Copy Number assays; TaqMan MicroRNA assays; and TaqMan Non-coding RNA assays.
At the time, Enzo also sued Roche, claiming that certain of Roche's nucleic acid probe products using Life Technologies' TaqMan probes infringe its patent, including the cobas AmpliPrep/cobas TaqMan HIV-1 tests; cobas AmpliPrep/cobas TaqMan HIV-1 tests v. 2.0; cobas AmpliPrep/cobas TaqMan HCV tests; cobas AmpliPrep/cobas TaqMan HBV tests v. 2.0; cobas TaqMan HCV tests v. 2.0 for use with the High Pure System; cobas TaqMan HBV tests for use with the High Pure System; cobas TaqScreen MPX tests; and cobas TaqScreen West Nile Virus tests.
The '197 patent relates to nucleic acids that are fixed or immobilized to non-porous solid substrates. "These compositions are useful for nucleic acid analyses and a host of applications, including, for example, detection, mutational analysis, and quantification. The non-porous solid supports can be transparent or translucent, and the surfaces can be treated with agents to fix or immobilize the nucleic acids," the patent abstract said.
Enzo originally filed 11 lawsuits against various companies relating to these two patents. Four have been settled, including this one, a $9 million settlement from Agilent in January, a $10 million settlement with Affymetrix in October 2015, and a $9.5 million settlement with Siemens in July 2015.
According to an Enzo spokesman, there are still seven cases pending before the Delaware court involving these particular patents: three cases against Hologic and Gen-Probe, and separate cases against Roche, Becton Dickinson, Abbott, and Illumina.
Enzo also added that this settlement does not affect its suit against Life Tech predecessors Applera and Tropix, which remains on appeal in the US Court of Appeals for the Federal Circuit. Enzo sued Applera and Tropix in 2004, claiming infringement of six different patents. A jury found Life Tech guilty of infringement in 2012 and awarded Enzo $48.6 million. A second court awarded Enzo an additional $12.4 million in connection with this suit in 2014. However, in March 2015, a federal appeals court reversed in part that decision, and remanded in part the case back to US district court.