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Life Technologies, Fluidigm Reach Licensing Deals, End Litigation

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Fluidigm and Life Technologies have reached cross-licensing and sub-licensing deals covering PCR-related technologies, imaging readers, and other technologies, putting an end to dual lawsuits the firms had filed against each other alleging patent infringement.

Under the terms of the agreements announced after the close of the market on Wednesday, Life Tech licensed patents covering methods of nucleic acid amplification, such as PCR, to Fluidigm. In return, Life Tech gains access to patents from Fluidigm related to imaging readers and other technologies.

The deal also provides Fluidigm a sublicense to Life Tech's digital PCR patents. Fluidigm is sub-licensing to Life Tech patents to certain non-core technologies that Fluidigm licensed from the California Institute of Technology, Fluidigm said in a document filed with the US Securities and Exchange Commission.

The licenses granted to Life Tech restrict its rights under Fluidigm's IP to develop systems that read Fluidigm's proprietary integrated fluidic circuits, Fluidigm noted.

The agreement obligates certain payments from both firms to the other. Fluidigm paid Life Tech $3 million in an upfront payment as part of the deal. Each company will also pay royalties to the other, including a royalty on certain Life Tech instruments.

Today's agreements are not expected to affect Fluidigm's exclusive collaboration with Novartis Vaccines & Diagnostics, it said. In May 2010, those firms inked a development deal, amended earlier this year, for molecular diagnostics based on Fluidigm's digital PCR system.

The licensing and sub-licensing deals bring about a resolution to a dispute between Fluidigm and Life Tech that resulted in both companies filing lawsuits against each other last week.

In a lawsuit filed in US District Court, Northern District of California, Fluidigm accused Life Tech of infringing two patents, US Patent Nos. 7,307,802 and 7,906,072 through the manufacturing, use, and sale of Life Tech's ViiA Real-Time PCR System, sold by its Applied Biosystems business.

The '802 patent was issued by the US Patent and Trademark Office on Dec. 11, 2007, while the '072 patent was issued on March 15, 2011. Both cover technologies for imaging selected fluorescence indications from a microfluidic device, according to their abstracts.

Life Tech sued Fluidigm in US District Court for the District of Delaware alleging Fluidigm infringed on US Patent Nos. 6,143,496 and 7,858,365

The '365 patent, titled "Sample Block Apparatus and Method for Maintaining a Microcard on a Sample Block," pertains to a device for "thermally cycling samples of biological material contained in a microcard having a top and bottom surface," according to the patent's abstract. The patent was issued on Dec. 28, 2010.

The '496 patent, titled "Method of Sampling, Amplifying, and Quantifying Segment of Nucleic Acid, Polymerase Chain Reaction Assembly Having Nanoliter-sized Sample Chambers, and Method of Filling Assembly," relates to methods of detecting and quantifying nucleic acid molecules by "using the simultaneous amplification of a plurality of discrete nanoliter-sized samples," according to its abstract. The patent was issued on Nov. 7, 2000.

Commenting on today's deals, Gajus Worthington, president and CEO of Fluidigm, said in a statement that it is a "very positive outcome for both companies. It provides each company with the freedom to compete in the marketplace instead of the courtroom."

On deadline, Life Tech had not responded to a request for comment.