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Invitrogen Sues Bio-Rad for Allegedly Infringing Certain Protein Gel Patents

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While a number of companies are competing for proteomics researchers' favor on big-ticket items like mass spectrometers, other firms are vying for market share for lower-end equipment common to every lab doing protein research.

One such market is the protein gel electrophoresis space. To help ensure that it continues to grow its presence in this market, Invitrogen earlier this month sued Bio-Rad Laboratories over this technology, claiming that some of Bio-Rad's protein gels infringe upon certain Invitrogen patents.

The suit, filed on April 8 with the United States District Court of the Southern District of California, alleges that a number of Bio-Rad's Criterion Bis-Tris gels infringe on three patents owned by Invitrogen, and they have taken from its market share.

The patents are U.S. Patent No. 5,922,185, No. 6,162,338, and No. 6,783,651.

All three patents are entitled "System for pH-neutral stable electrophoresis gel" and list Timothy Updyke and Sheldon Engelhorn as inventors. Two of the patents are assigned to Novel Experimental Technology, or Novex, a San Diego-based company that specializes in pre-cast electrophoresis gels. Invitrogen acquired the company in 1999.

Invitrogen, which said it has not licensed the patents to any other party, employs the technology in its line of NuPAGE gels. In the court filing, Invitrogen said the gels, which are small-format precast polyacrylamide gels for separating proteins, have been "immensely successful."

The technology, which employs Bis-Tris as a buffer to keep the pH close to neutral, has several advantages over other electrophoresis gels, according to Invitrogen. The neutral pH minimizes protein modifications, thus improving protein separation and resolution. In addition, the pH prevents hydrolysis of the polyacrylamide, so the shelf-life of the gels is 12 months, much longer than that of other pre-cast gels.

Invitrogen offers the NuPAGE gels in three different polyacrylamide concentrations and two different running-buffer types.

In its suit, Invitrogen claims that Bio-Rad's Criterion XT Bis-Tris gels are infringing its patents and have been "eroding Invitrogen's market share in the PAGE gel market" since they were introduced in 2003. Revenues from its NuPAGE Bis-Tris gels declined by 16 percent between 2002 and 2004, Invitrogen said in the court filing.

In a court-filed declaration, Amy Butler, Invitrogen's manager for the proteomics business segment, maintains that "Bio-Rad's sales force is aggressively encouraging consumers to choose Criterion XT gels and is luring Invitrogen's NuPAGE gel customers to switch to Criterion XT gels by offering cheaper prices (per sample) for those NuPAGE customers who will purchase Criterion XT gels."

The list price for a box of 10 NuPAGE gels, with up to 17 wells each, is approximately $110, translating to 65 cents per sample. Bio-Rad sells its Criterion XT Bis-Tris gels, which have up to 26 wells, for $13 apiece, or 50 cents per sample.

Invitrogen, which said it believes the Criterion XT gels are "inferior" to its own product, is seeking a preliminary and permanent injunction to stop Bio-Rad from selling the gel products, as well as damages and attorney fees.

To speed up the process, Invitrogen on April 14 filed a so-called ex parte request asking the court for an early case management conference to set a date for an injunction hearing and to approve a schedule. The request also seeks to expedite the discovery process that determines whether Bio-Rad infringes the patents.

Preliminary injunctions are rarely granted in patent cases because of the high legal standards that need to be met, Richard Warburg, a patent lawyer with Foley & Lardner in San Diego who is not involved with the suit, told BioCommerce Week, ProteoMonitor's sister publication. However, courts are often willing to grant requests of expedited discovery, he said.

Invitrogen cites several reasons why it sees a need for a swift injunction: Some users of electrophoresis gels cannot easily change brands once their protocols have been approved by the FDA, for example.

In addition, Invitrogen believes Bio-Rad is about to launch a new gel product with a narrower format that will also infringe its patents, which would be in direct competition with its NuPAGE gels.

Ron Hutton, Bio-Rad's treasurer, would not comment on the suit or whether Bio-Rad is planning to launch such a product.

Though Invitrogen's NuPAGE product line only contributes a "very small percentage" to its overall revenues, it is still "meaningful enough so we want to sue," Adam Taich, Invitrogen's vice president for investor relations, told BioCommerce Week.

"It's not anything that would have a material impact on our business," Taich said. However, "if you let people infringe on your IP — you let them get away with it once — they will try to get away with it again. We spend a lot of money and time developing products and want to make sure that we are protecting against anyone who's infringing."

Bio-Rad also does not put a huge tag on its Criterion XT gel product line. According to Hutton, "there are thousands of products in [our] life science [segment]; this is one of them. It's not a huge part; it's meaningful, but it's not huge."

However, the outcome could materially affect labs that use the gels. Precast gels, for their convenience and consistency, have become widely used in many protein research labs, and if Invitrogen prevails, the choice for researchers will become narrower. "I think most labs now use them," said Daniel Jay, a professor in the department of physiology at Tufts University. His lab currently runs Bio-Rad's gels, which are available from the department's stock room. "It's not advanced technology, but certainly widely used," he said.

— JK