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In PerkinElmer Mass Spec Suit, Waters' Patent Reexam Requests Could Signal Infringement Worries


This story originally ran on March 8.

By Adam Bonislawski

Waters said this week that its ongoing patent dispute with PerkinElmer would not affect its ability to supply its mass spec customers.

However, past requests by Waters to reexamine the patents in question could suggest that it was concerned that it might infringe them, Theodore Naccarella, a patent attorney and partner in the law firm Saul Ewing LLP, told ProteoMonitor this week.

PerkinElmer sued Waters last week in the US District Court for the District of Massachusetts (GWDN 3/1/2012), claiming that certain of the company's mass spec machines — including its Premier, Synapt, and Xevo lines — infringe US Patent Nos. 5,652,427 and 5,962,851, both entitled "Multipole ion guide for mass spectrometry."

According to the patents' abstracts, the invention pertains to methods and devices that "improve performance and lower the cost of atmospheric pressure ion source mass spectrometer instruments." Both patents were issued to inventors Craig Whitehouse and Erol Gulcicek and were initially assigned to Analytica of Branford, which PerkinElmer acquired in 2009.

PerkinElmer is asking for damages and an injunction against Waters from further infringement.

Jeff Tarmy, Waters' manager of corporate communications, told ProteoMonitor this week that the company couldn't comment on the specifics of ongoing lawsuits, but that it was "confident that there won't be any disruption in our ability to supply mass spectrometry technology to our customers globally."

Naccarella said, however, that requests by Waters in 2010 that the US Patent and Trademark Office reexamine the two patents suggest that the company is "very worried" about them. Naccarella isn’t representing either party in the suit.

Waters filed requests with the USPTO in March 2010 and April 2010 for reexamination of the '851 and '427 patents, respectively. Such requests, Naccarella noted, are often made by parties hoping to introduce prior art that could invalidate the patents under reexamination, and, indeed, upon reexamination certain of the original patents' claims were deemed invalid.

A number of the patents' other claims were upheld, however, and some of the claims that were deemed invalid were amended during reexamination to make them valid. The USPTO issued the reexamined patents RX '427 and RX '851, containing the approved original claims and amended claims, in November 2011.

The fact that the patents survived reexamination suggests that they are less likely to be declared invalid in any ensuing court battle between Waters and PerkinElmer, Naccarella told ProteoMonitor.

"The fact that the patents went through reexamination and survived — that they've basically been through examination by the [USPTO] twice — would lead me to guess that they are pretty strong," he said. "Most likely [during the reexamination] Waters put forth the best prior art it had. That doesn't mean a court can't come back and [rule differently from the USPTO], but I think most patent lawyers would say [a reexamined patent] is a pretty strong patent."

The validity of the PerkinElmer patents is separate from the question of whether Waters has infringed them, Naccarella said, noting that without inside knowledge of the accused products it was impossible to comment on this latter issue.

However, he speculated, given Waters' previous reexamination request, the idea that it was worried about infringing the patents" would be a natural conclusion," he said. "If they [aren't worried about infringing], why would they spend what had to be tens of thousands of dollars filing a request for reexamination?"

Naccarella also noted that, typically, a company doesn't file reexamination requests unless it has reason to think a patent holder may sue it for infringement.

"Normally you're not going to file a request for reexamination unless you have a good reason to think the patentee is going to come after you," he said. "Say you knew you were infringing a patent. Would you go out and file a reexamination certificate and basically tell the patentee, 'Hey, look at me?'"

He suggested that in this case, PerkinElmer's 2009 purchase of Analytica of Branford – to whom the original '427 and '851 patents were issued in 1997 and 1999, respectively – could have been the precipitating incident (GWDN 5/6/2009). Waters made the reexamination request ten months after that acquisition.

Naccarella added, however, that it is possible the patent reexams placed Waters in a stronger position regarding potential infringement than before.

"The patents were substantially amended during reexamination," he said. "Thus, it's quite conceivable that the claims that most worried Waters were, in fact, cancelled or at least amended such that Waters no longer infringes them."

Although, "obviously [PerkinElmer] still thinks it has at least a decent case against Waters," he added.

This is not the first suit PerkinElmer has filed for infringement of certain of its mass spec patents. In January 2010, the company sued Life Technologies, MDS, and MDS Analytical Technologies, alleging that they were infringing five mass spec patents, including '427 and '851 (PM 1/22/2010).

That suit had threatened to hold up Danaher's purchase of Applied Biosystems' and MDS' mass spectrometry joint venture – which has since become AB Sciex. However, PerkinElmer dropped the suit six days after filing it. It did not provide a reason in court documents for the withdrawal.

PerkinElmer is not a major player in mass spec-based proteomics, instead targeting its LC-MS systems more toward applications like food safety and environmental testing. Several of the Waters instruments named in the suit are widely used in proteomics research, including the Xevo G2 Q-TOF and the Synapt G2 machines.

Have topics you'd like to see covered in ProteoMonitor? Contact the editor at abonislawski [at] genomeweb [.] com.

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