The first leg of Agilent's defense in the mass spec patent infringement suit leveled at it by PerkinElmer fell this month, with the US District Court for the District of Massachusetts denying the company's motion to dismiss the case.
This motion denied, the case will now likely turn on Agilent's claims that the patents PerkinElmer charges it has infringed upon are indistinguishable from other, expired patents, and therefore are not entitled to protection.
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 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."
Agilent has also petitioned the court for a stay in the proceedings pending reexamination by the US Patent and Trademark Office of the patents under dispute (PM 10/23/2012).
In addition to arguing that the PerkinElmer patents were not entitled to protection, Agilent also sought to have the case dismissed on the grounds 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).
On Jan. 8, however, the court denied this motion, ruling that, in fact, PerkinElmer did have standing to pursue the claim.
PerkinElmer is asking for damages and an injunction against Agilent from further infringement.