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PerkinElmer Drops Mass Spec IP Suit Against Waters; Continues Case Against Agilent

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PerkinElmer's suits against Waters and Agilent for infringement of mass spectrometry patents moved forward this month, with the company dismissing with prejudice its claims against Waters and receiving a motion to dismiss from Agilent.

PerkinElmer filed a notice of dismissal of its claims against Waters (PM 3/9/2012) on June 21 in the US District Court for the District of Massachusetts. The dismissal with prejudice means that the company can't bring the same claims again and suggests that the two firms reached a settlement resolving the dispute, Randy Pritzker, a shareholder at Boston-based law firm Wolf Greenfield specializing in intellectual property, told ProteoMonitor.

The previous week, on June 15, Agilent filed a motion to dismiss the patent infringement suit PerkinElmer filed against it in April (GWDN 4/9/2012), 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.

This, Agilent asserted, "means that Yale is a necessary party to the complaint."

In its initial complaint, 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."

Both patents were issued to inventors John Fenn, Chin-Kai Meng, and Matthias Mann. Initially assigned to Fenn, the patents 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.

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.

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

"Typically an exclusive licensee has that right and a non-exclusive [licensee] not, Pritzker said. 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 said.

In its motion to dismiss, Agilent asserted that because Yale retained a number of rights, including the right to initiate legal action to uphold the patents and participate in any legal action initiated by the licensee, PerkinElmer does not, in fact, have standing to bring the suit.

The motion, Pritzker said, "is 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. "If PerkinElmer overcomes this hurdle, then [Agilent] will defend [that decision] on the merits … or they'll settle the case," he suggested.

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