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Agilent Seeks Stay in PerkinElmer Mass Spec Suit Pending USPTO Reexam of Disputed Patents

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PerkinElmer's mass spec patent infringement suit against Agilent has shifted direction in the last several weeks, with Agilent now petitioning the court for a stay in the proceedings pending reexamination of the patents under dispute.

The parties have also filed into evidence documents that provide insight into the origins of the dispute, which, according to PerkinElmer's original complaint, stemmed from Agilent's decision last year to stop making royalty payments required under its license to several of PerkinElmer's mass spec patents (GWDN 4/9/2012).

In this initial complaint, filed in April in the US District Court for the District of Massachusetts, PerkinElmer alleged that Agilent infringes US Patent Nos. 5,686,726 and 5,581,080, entitled, respectively, "Composition of Matter of a Population of Multiply Charged Ions Derived from Polyatomic Parent Molecular Species" and "A Method for Determining Molecular Weight Using Multiply Charged Ions."

PerkinElmer alleges that Agilent mass spectrometry systems — including the company's 6100 series quadrupole, 6200 series TOF, 6300 series ion trap, 6400 series triple quadrupole, and 6500 series Q-TOF instruments — infringe the patents.

Both patents were issued to inventors John Fenn, Chin-Kai Meng, and Matthias Mann, and were subsequently assigned to Yale University, which granted an exclusive license to the patents to Analytica of Branford, which PerkinElmer acquired in 2009.

Analytica entered into an agreement with Agilent in March 1997, granting Agilent a license to the patents. According to PerkinElmer's complaint, Agilent stopped making royalty payments required by this agreement after June 30, 2011, breaching the contract and leading to termination of the licensing agreement.

A June 28, 2011, letter included by Agilent as part of a filing on Oct. 12 in support of its motion requesting a stay in the proceedings shows that Agilent stopped paying these royalties upon expiration of the PerkinElmer-held US Patents Nos. 5,130,530 and 6,188,120, claiming that the '726 and '080 patents were "remarkably similar to the expired patents."

The letter, written by Agilent general manager of LC/MS, John Fjeldsted, and addressed to PerkinElmer IP Licensing Counsel John Hamilton, notes that the company's counsel "has advised [Agilent] that the claims of the '080 and '726 patents are patentably indistinct from the expired claims and therefore are not entitled to additional patent protection beyond that of the expired patents." Therefore, Fjeldsted wrote, "Agilent owes no further royalties under the license."

In September, as part of its request for a stay in the proceedings, Agilent alerted the court that the US Patent and Trademark Office had accepted its July 17 request for reexamination of the '080 and '726 patents.

It argued that given the USPTO's decision to reexamine the disputed patents, the court should stay the proceedings due to considerations including that the reexamination could provide information that could streamline and simplify the trial or result in the suit being dismissed or being settled out of court.

On Oct. 11, PerkinElmer filed a memorandum opposing Agilent's request to stay litigation, asserting that the request was "a litigation tactic designed to defer making royalty payments to PerkinElmer for as long as possible."

PerkinElmer also referenced an Oct. 2 filing in which it moved to amend its original patent infringement complaint to include a count for breach of license agreement. The addition of this count, PerkinElmer said, meant that even were the USPTO to declare the disputed patent invalid, litigation would still be necessary to resolve the breach of license charge.

According to both companies' filings, the decision whether to grant a stay comes down to three primary factors: "whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; whether a stay will simplify the issues in question and trial of the case; and whether discovery is complete and whether a trial date has been set."

This week Agilent requested an oral hearing on its motion requesting the stay.

A trial date has been set for June 2, 2014. However, discovery has not been completed. In fact, Agilent has objected to responding to written discovery requests served by PerkinElmer on Sept. 5, noting that it still has a motion to dismiss the lawsuit pending.

Agilent filed this motion to dismiss in June, asserting that PerkinElmer did not have standing to bring the suit because it does not, through its license from Yale University, "own 'all substantial rights'" in the patents under dispute (PM 6/29/2012).

In order to bring an infringement suit in its own name, a licensee must possess all substantial rights to a patent, which, Agilent claimed, PerkinElmer does not.

"Typically an exclusive licensee has that right and a non-exclusive [licensee does] not,” Randy Pritzker, a shareholder at Boston-based law firm Wolf Greenfield specializing in intellectual property, told ProteoMonitor at the time. However, while PerkinElmer is an exclusive licensee to the patents, "there is obviously grey area and a body of law that defines what substantial rights are and the criteria that would indicate whether substantial rights have been given," he added.

The motion, Pritzker said, was "an initial attempt to get rid of the suit" that doesn't touch on Agilent's arguments for why it stopped making royalty payments in the first place. He predicted that, "if PerkinElmer overcomes this hurdle, then [Agilent] will defend [that decision] on the merits … or they'll settle the case."

Indeed, although the court has yet to rule on Agilent's motion to dismiss, the company, through its USPTO reexamination effort and pursuit of a stay in litigation, has already moved on to additional lines of defense.

The argument underlying Agilent's decision to stop paying royalties potentially raises larger questions about PerkinElmer's mass spec IP portfolio. PerkinElmer has not said if it has licensed the patents to any other mass spec vendors. However, the patents in question are key patents underlying the technology of electrospray ionization, or ESI, a technique for producing ions for mass spec analysis. ESI has proven particularly useful for mass spec analysis of large molecules like proteins and is widely used in proteomics research.

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