NEW YORK (GenomeWeb News) – Life Technologies has filed a suit asking a federal court to find that the firm does not infringe a patent held by Promega and it has retained rights under a licensing agreement related to cell line authentication and identification.
Life Tech also asked the US District Court Southern District of California to find that the dispute should be resolved through binding arbitration.
The dispute revolves around US Patent No. RE37984, issued in 2003. The patent was assigned to Max-Planck-Gesellschaft zur Forderung der Wissenschaften (Max Planck Society), which subsequently entered into a licensing agreement with Research Genetics. In 1996 Research Genetics granted Promega an exclusive license in certain fields and non-exclusive rights in other fields related to the German patent that eventually became the '984 patent.
Research Genetics retained rights under the Promega deal to the patent for all other uses, including cell line authentication and identification.
In 2000, Invitrogen acquired Research Genetics and assigned the 1996 Promega agreement to Invitrogen IP Holdings, a wholly owned subsidiary of Invitrogen. In its complaint filed on Monday, Life Tech, formed from the merger of Invitrogen and Applied Biosystems (ABI), said that as a result of its purchase of Research Genetics, Invitrogen Holdings "acquired inter alia the right to receive royalties for Promega's use of the '984 patent and to compel arbitration of disputes arising" from the 1996 agreement.
ABI and Invitrogen IP Holdings are also plaintiffs in the lawsuit.
ABI and Invitrogen develop and manufacture single tandem repeat-based products that are used in forensic DNA analysis and paternity testing. This month, Life Tech began selling a new line of STR-based products for cell line authentication/identification called Authentifiler.
While Life Tech said the 1996 agreement between Research Genetics and Promega gives it the rights to products such as Authentifiler, it said that Promega is disputing that claim.
"Because Research Genetics retained rights to at least cell line authentication/identification uses when granting Promega its limited exclusive license … pursuant to the … 1996 License Agreement, and those retained rights are, and have always been, in the possession of Life Tech and its affiliates, accordingly the Authentifiler products are licensed under the '984 patent and do not infringe," Life Tech asserted in its complaint.
Life Tech also said that the 1996 agreement stipulates that its dispute with Promega should be addressed in binding arbitration and that Invitrogen Holdings has notified Promega seeking arbitration in the current matter.
Life Tech noted, though, that Promega in the past has "refused to arbitrate disputes" arising from the 1996 agreement, and as an example cited Promega's unwillingness to submit to arbitration in a "routine dispute" over Promega's refusal to pay royalties under the agreement. Invitrogen Holdings was, as a result, forced to file a motion with the US District Court for the District of Wisconsin to compel arbitration, Life Tech said.
It is asking the California court to declare that the current matter be decided in binding arbitration pursuant to the 1996 agreement.
Life Tech further asks the court to find that the company retains all rights under the agreement related to cell line authentication/identification and that the Authentifiler products do not infringe the '984 patent.
Life Tech noted past litigation that Promega has brought against it alleging infringement of the '984 and other patents. In May 2010 Promega sued Life Tech in US District Court for the Western District of Wisconsin over the sale of Life Tech's STR products.
In February, a jury sided with Promega and awarded the company $52 million in damages. In September, the court overturned the jury's award, but it left intact the previous ruling that Life Tech's sale of STR products infringe Promega's patents.
"Although the $52 million jury award did not survive post-trial briefing, Promega's very recent efforts to enforce the '984 patent against Plaintiffs, and the magnitude of damages it sought in connection with those efforts, demonstrate that there is a substantial and immediate controversy as to whether the newly released Authentifiler products infringe the '984 patent," Life Tech said in its complaint. "Indeed, Plaintiff's are presently in the position of having to choose between either abandoning their new Authentifiler products, or running the risk of being sued by Promega for infringement, despite believing that the Aunthentifiler products are licensed under the '984 patent and hence do not infringe."