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Sued by Life Tech, Biosearch Denies Infringing PCR Probe IP, Claims Patents are Invalid

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Biosearch Technologies, sued last September by Life Technologies and its Applied Biosystems business for allegedly infringing five patents related to PCR probes, last week denied the charges and said the patents are invalid.

The company also claimed that Life Technologies lacks standing to sue, and "denies that plaintiffs are entitled to the relief sought, or any other relief."

The response, filed Jan. 5 with the US District Court for the Eastern District of Texas Marshall Division, related to US patents Nos. 5,538,848; 5,723,591; 5,876,930; 6,030,787; and 6,258,569. They protect self-quenching fluorescent probes used in real-time PCR.

In a separate motion filed with the court, Biosearch and co-defendant Eurofins MWG Operon, charged Life Technologies with attempting to "manipulate venue," and requested that the suit be transferred to the Northern District of California. Biosearch is based in Novato, Calif., near San Francisco, while Life Tech's headquarters are in Carlsbad, Calif.,and the AB business is located in Foster City, Calif.

In their motion to move the suit, Biosearch and Eurofins noted that Life Technologies and AB initially only sued Biosearch on Sept. 18, 2009, "alleging infringement of the five patents by making, using, importing, selling and/or offering to sell dual-labeled probes incorporating a quencher and fluorophore reporter covalently linked to the 3' or 5' ends of an oligonucleotide, which are used to monitor DNA amplification in real time."

Biosearch said that it informed Life Tech at the time that it did not believe the Eastern Texas court was the proper venue and that it wanted to transfer the case to the Northern District of California. On Nov. 5, 2009, Life Tech and AB filed an amended complaint that named three additional defendants — Eurofins, a Delaware corporation that does business in Huntsville, Ala.; and two Texas-based firms: Bio-Synthesis, which does business in Lewisville, and the Midland Certified Reagent Corporation, which does business in Midland.

In the motion, Biosearch and Eurofins claim that the two Texas firms were added as "makeweight," and note that the "overwhelming majority" of witnesses and documents associated with the case are in the Northern District of California.

'Inexcusable Lack of Diligence'

In its complaint, Life Tech sought an injunction against Biosearch, damages worth "no less than a reasonable royalty" as compensation for the alleged infringement, and a ruling that Biosearch had willfully infringed the patents, which would make the firm liable for triple damages.

In its answer to the complaint, Biosearch asserted that it "has not infringed, contributed to the infringement of, or induced the infringement of any valid claim of the '848, '591, '930, '787, or '569 patents."

Furthermore, it stated that "one or more claims" of each of the five patents are invalid and that the plaintiffs "lack standing to sue because neither holds sufficient rights to one or more of the '848, '591, '930, '787, or '569 patents."

Biosearch also said that it believes that "arguments and amendments contained in the prosecution history of the '848, '591, '930, '787, and/or '569 patents will estop or bar any claims for alleged infringement."

The company's response also invoked the "doctrine of laches," which refers to a delay on the part of the plaintiff between learning of the alleged infringement and filing suit.

"Plaintiffs knew of Biosearch’s allegedly infringing actions since at least June 1998," Biosearch notes in the document, adding that Life Tech "inexcusably failed to pursue [its] infringement claims in a timely and diligent manner from the time it became aware it had claims against Biosearch." As a result, the company said it has been "materially prejudiced by plaintiffs’ inexcusable lack of diligence."

Biosearch also claims that the patents are unenforceable due to two examples of "inequitable conduct" during their prosecution.

In the first example, Biosearch claims that an attorney who acted on behalf of the inventors used "false and misleading" information to characterize a European patent application that had led an examiner at the US Patent and Trademark Office to reject several claims in the '591 patent. Biosearch alleges that the attorney "intentionally misrepresented" the information in the European patent "with the intention to mislead or deceive the PTO." The examiner ultimately withdrew the rejection of claims.

"As such, his misleading arguments directly relate to the patentability of the claims in the '591 patent," Biosearch states, adding that, as a result, "any other patents with an immediate and necessary relationship to this patent, including but not limited to any patents in the same family, are further unenforceable by plaintiffs."

In the second example, Biosearch claims that the inventors of the patents were aware of the existence of prior art — a study published in 1990 in Nucleic Acids Research — "that disclosed dual-labeled oligonucleotide probes incorporating a quencher and fluorophore reporter for use as a fluorescence resonance energy transfer (FRET) probe," yet omitted this information from any Information Disclosure Statements during the prosecution of the five patents.

Biosearch claims that the inventors knew of the paper since "at least" Nov. 16, 1994, because the paper is mentioned in the application for the ‘848 patent, which was filed on that date.

The company asks the court to dismiss with prejudice "any and all claims" of the plaintiff's complaint, to judge the five patents and their claims invalid and unenforceable, to find that Biosearch has not and does not infringe the IP, and to deny Life Tech and ABI any remedies or relief.

Biosearch requests that the court award it attorneys' fees, the costs of suit, and "such further relief as deemed just and proper."

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