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Court Splits Decision in Order on Further Discovery in PerkinElmer, Agilent Mass Spec Suit

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NEW YORK (GenomeWeb) – A federal court has issued a mixed decision in the ongoing patent dispute between PerkinElmer and Agilent Technologies regarding their mass spectrometry technologies and a licensing agreement.

In a decision issued Aug. 22, the US District Court for the District of Massachusetts granted Agilent's motion to compel PerkinElmer to respond more fully to two interrogatories while declining to compel the company to provide deposition transcripts from other cases.

Agilent's motion concerned questions and documents it asserts are relevant to interpreting mass spec software covered under the two companies' license agreement, which has emerged as a key aspect of their dispute.

The lawsuit began in April 2012 when PerkinElmer filed a complaint alleging 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 – infringed two of its patents, US Patent Nos. 5,686,726 and 5,581,080, entitled "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," respectively.

Since this initial filing, however, the case has narrowed to focus solely on questions of breaches of the two companies' license agreement for these technologies. This shift stems from two US Patent and Trademark Office actions issued in May 2013 regarding the re-examination of the disputed patents.

On May 14, 2013, the USPTO issued an office action for the '080 patent, in which it rejected all but two of the claims of the patent for double patenting. On May 24, it issued an office action for the '726 patent in which it rejected all of the claims of the patent for double patenting and being anticipated and/or obvious.

PerkinElmer is entitled to respond to these USPTO rulings, but in the meantime, the companies have agreed to narrow the proceedings' scope, jointly submitting a motion in July 2013 to limit the litigation to PerkinElmer's breach of contract count encompassing only damages relating to the period before July 1, 2011.

Perhaps anticipating the USPTO's ruling, PerkinElmer added that breach of contract count to its initial patent infringement complaint in an Oct. 2, 2012 filing.

Agilent, meanwhile, has filed counterclaims asserting that it overpaid royalties on the sales of certain mass spectrometers that were not used in a manner covered by patents it had licensed from PerkinElmer. As such, the company argued that it is owed restitution by PerkinElmer of any money the latter company unlawfully received via this overpayment.

Last week's decision concerns discovery in these breach of contract disputes and specifically the software portion of the licensing agreement between the two firms. Under the agreement, Agilent (then a part of Hewlett Packard) was required to purchase for $5,000 from Analytica of Branford (which subsequently merged with PerkinElmer) software for analysis of data generated using AOB's mass spec technology.

This software dispute centers around whether or not Agilent owed royalties on sales of "second seat" copies of mass spec deconvolution software sold for use with mass specs that were already equipped with such software on which royalties were paid.

In its motion, Agilent sought to compel PerkinElmer to more fully respond to two questions it made in discovery regarding PerkinElmer's understanding of the terms "average algorithm" and "deconvolution algorithm" as used in the '726 and '080 patents.

According to Agilent, an understanding of these terms is required for determining whether the software products in dispute fall under the licensing agreement.

In response, PerkinElmer objected that these questions were "overbroad, unduly burdensome, and requested information that was irrelevant and privileged."

It also asserted that it had not participated "in prosecution of the underlying patents" and that it had not had a chance to "make the appropriate and necessary study" of the terms in question.

However, in last week's ruling, the court ordered PerkinElmer to give more complete replies to these questions, noting that the information is potentially relevant and that PerkinElmer's responses had thus far been insufficient.

On the other hand, the court denied Agilent's motion to compel PerkinElmer to release deposition transcripts from other cases, specifically depositions taken during AOB's dispute with John Fenn, developer of the methods covered by US Patent No 5,130,535, which underlies the '726 and '080 patents, and an owner of the '535 patent. In its ruling, the court said Agilent has not demonstrated the relevance of these transcripts.

Because both firms have moved for summary judgment on their breach of contract claims, PerkinElmer's replies can wait until after resolution of these motions, the court ruled, noting that following its ruling on these summary judgment motions, the two companies will be required to file a report establishing whether or not they still consider the questions relevant in light of the ruling.

Both firms also asked the court to grant them an award covering the fees and costs of bringing or defending the discovery motion. However, the court declined to award either party.

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