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ABI/MDS Sciex Suing Thermo Electron For Violation of 736 Mass Spec Patent

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Following an $18.1 million court victory against Waters in March, Applied Biosystems/MDS Scientific Instruments have set their legal sights on Thermo Electron for the alleged infringement of a patent involving the company’s triple quadrupole mass spectrometers.

According to a complaint filed on Sept. 3 with the US District Court for the District of Delaware, ABI/MDS are seeking damages from Thermo for “willfully infringing” upon US patent number 4,963,736—the same patent that Waters was found to have infringed upon in 2002 [see PM 4/1/02].

“Our leadership with MDS Inc. in this technology area is the result of significant research and development investments over the last decade, and we believe in protecting our investments,” Lori Murray, a spokeswoman for ABI, said this week.

Walt Hanley, the lead attorney in the case for ABI, said the Applera unit instructed him not to comment on the litigation. Similarly, Naomi Nemeth, a spokeswoman for MDS Sciex, and Lori Gorski, a spokeswoman for Thermo Electron, said that they were not allowed to comment on the pending litigation.

Though neither party would disclose the monetary sum sought by ABI/Sciex, the complaint,specifies that plaintiffs seek treble damages “due to the willful nature of such infringement.”

The ‘736 patent, entitled “Mass Spectrometer and Method and Improved Ion Transmission,” deals with how ions travel through a mass spectrometer through chambers with different amounts of pressure. It was registered on Oct. 16, 1990.

According to Thermo Electron officials, the primary focus of the lawsuit is Thermo’s triple quadrupole mass spectrometers, which make up approximately one percent of the company’s annual revenues, or approximately $10 million.

Thermo launched its first triple quad line in 2002, and mass spectrometers overall at the company have grown in revenues by about 10 percent per year since then, according to analyst Derik DeBruin, who covers Thermo for UBS Warburg.

Thermo Electron reported total revenues of $1.1 billion in the second quarter of this year, up from $921.9 million in the second quarter of 2003. The company’s life and laboratory sciences segment posted $370 million of those receipts. Mass spectrometry systems showed “strong sales”, according to a release issued by the company.

Thermo’s most popular triple quadrupole product is its Finnegan TSQ QUANTUM Series, which includes the Finnigan TSQ Quantum Discovery MAX, the Finnigan TSQ Quantum Ultra EMR, the Finnigan TSQ Quantum Ultra and the Finnigan TSQ Quantum Ultra AM. The Quantum Series mass spectrometers feature HyperQuad mass analyzer technology and an orthogonal source.

Brian Musselman, an analyst for SciMarket Strategies who specializes in mass spectrometry, said that the current suit regarding triple quadrupole technology may concern different technology than in the Waters suit.

“With the Waters MALDI-TOF product the issue was the source design,” said Musselman. “The triple quadrupole is part of the analyzer, which is a different part [of the mass spectrometer].”

ABI/MDS first sued Waters in 2000 for infringment of patent ‘736. Two years later, Waters paid Applera, ABI’s parent company, $56.2 million after the US Court of Appeals for the Federal Circuit upheld a lower court’s ruling in favor of ABI/MDS on the ‘736 patent-infringement claims.

The ruling caused Waters to pull off the US market its Q-TOF and Quattro Ultima triple quad, as well as its Q-TOF Ultima MALDI. The company continues to sell the instruments abroad.

In December 2002, ABI/MDS filed an additional suit against Waters regarding an o-MALDI ion source that violated US Patent No. 6,333,702. The suit was settled out of court in March for $18.1 million. For many years, Waters officials attributed part of its disappointing performance in mass spec sales to lawsuit expenses and lost sales from its recalled instruments.

As in the first suit against Waters, ABI/MDS’ claims against Thermo argue that the company willfully infringed upon the ‘736 patent, and therefore should be compensated in triple. In addition to seeking damages for willful patent infringement, ABI/MDS also seeks compensation for costs, attorneys’ fees, and expenses.

“Defendant Thermo’s infringement of the ‘736 patent has been and continues to be willful, without license, and carried out with full knowledge of the ‘736 patent,” the complaint states. “Plaintiffs AB/Sciex have been damaged by defendant Thermo’s infringement and will be irreparably injured unless that infringement is enjoined.”

—TSL

 

For history on ABI/MDS’s patent infringement lawsuits against Waters, see these ProteoMonitor articles:

  • March 19, 2004: Waters Settles Last ABI/MDS Suit for $18.1M: Company Ready to Move On
  • March 17, 2003: $52.6M Judgement Upheld Against Waters
  • Dec. 12, 2002: Troubled Waters: More Patent Lawsuits Threaten Company’s Current Mass Specs
  • April 29, 2002: Micromass Resumes Shipping Q-TOF APIs But MALDIs and Globals Wait
  • April 1, 2002: Micromass Pulls High-End Q-TOFs After Losing Patent Dispute to ABS/MDS Sciex

 

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