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Promega Sues Life Technologies Alleging IP Infringement on STR Technology

NEW YORK (GenomeWeb News) – Promega is suing Life Technologies saying it infringes patents held by Promega covering the analysis of small tandem repeat loci for genetic analysis.

In its complaint filed in US District Court Western District of Wisconsin last week, Promega alleges Life Tech and its Applied Biosystems business infringe US Patent No. RE37984 through the sale of AuthentiFiler products.

The patent was issued in the US in 2003. It was assigned to Max-Planck-Gesellschaft zur Forderung der Wissenschaften (Max Planck Society), which subsequently entered into a licensing agreement with Research Genetics, who in 1996 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.

Research Genetics was acquired by Invitrogen in 2000 and assigned the 1996 agreement with Promega to Invitrogen IP Holdings, a wholly owned subsidiary of Invitrogen. Invitrogen and ABI merged in 2008 forming Life Tech.

In December, Life Tech sued Promega asking the US District Court Southern District of California to find that Life Tech, ABI, and IP Holdings do not infringe the '984 patent and that the matter should be resolved through binding arbitration.

In its complaint at the time, Life Tech contended that through 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.

However, Promega claims in its own lawsuit that in addition to granting it certain exclusive rights to the '984 patent, its deal with Research Genetics granted it the right to sublicense to third parties the rights that Promega acquired pursuant to the 1996 deal.

They include certain exclusive rights to "use, make, offer to sell, sell and import methods, products, and compositions of matter embraced by the '984 patent," Promega said in its complaint.

ABI and Invitrogen develop and manufacture STR-based products that are used in forensic DNA analysis and paternity testing, and in December, Life Tech began selling a line of STR-based products called AuthentiFiler for cell line authentication/identification.

The AuthentiFiler products, Promega alleged, infringe its exclusive rights to the '984 patent.

Also named as an involuntary plaintiff in its lawsuit is the Max Planck Society "because it has expressed its unwillingness to participate" in a lawsuit filed in 2010, in which Promega sued Life Tech. A jury last year found Life Tech willfully infringed Promega's IP surrounding STR technology and awarded the Madison, Wis.-based company $52 million in damages. A federal judge later overturned the award, though.

Promega asks the court find that Life Tech and ABI infringed and induced others to infringe the '984 patent, and is seeking damages and a permanent injunction against Life Tech and ABI.

Promega did not specify the amount in damages it seeks, but said in its complaint that "[t]he amount in controversy exceeds the sum of $75 million, exclusive of interest and costs."

Meanwhile, Life Tech's lawsuit against Promega filed in December is pending. Promega said last week that it has not yet been served with the complaint.

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