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In Countersuits, PacBio, Life Tech, and Illumina Claim Helicos Patents are Invalid and Unenforceable


By Julia Karow

This article has been updated from a version posted Dec. 20 to include details about Life Technologies' and Illumina's countersuits.

Pacific Biosciences, Life Technologies, and Illumina have countersued Helicos BioSciences, claiming that several patents Helicos says the firms have been infringing are invalid and unenforceable.

Helicos filed suit against PacBio in late August in the US District Court for the District of Delaware, alleging that PacBio's single-molecule real-time SMRT technology infringes claims in four of its patents: US Patents No. 7,645,596; 7,037,687; 7,169,560; and 7,767,400 (IS 8/31/2010). The patents relate to sequencing-by-synthesis technology, specifically SBS methods using labeled nucleotides.

In October, Helicos added Illumina and Life Technologies as defendants to the suit, claiming that Illumina's Genome Analyzer and HiSeq instruments as well as Life Tech's single-molecule quantum dot nanocrystal technology infringe several or all of the patents (IS 10/26/2010). In Life Tech's case, the patents in suit are the '596, '687, and '560 patents; while the Illumina case covers the the '560, and '687 patents, as well as US Patent No. 7,593,109.

In its response and countersuit, filed Nov. 8, PacBio denied infringing any "valid or enforceable claim" of the four patents. In addition, it alleged that the patents are invalid because they do not meet the requirements for patentability, and are unenforceable because of "patent misuse, estoppel, laches, waiver, unclean hands, or other equitable doctrines."

Likewise, this week both Life Tech and Illumina filed responses and countersuits against Helicos.

Both firms argue that they do not infringe the Helicos patents. Furthermore, both Life Tech and Illumina claim that the patents are invalid and unenforceable and asked the court for a jury trial to declare that they do not infringe the patents and that they are invalid.

PacBio claimed in its countersuit that the '596 and '560 patents, in particular, are unenforceable due to inequitable conduct by Helicos, which it alleged misled the United States Patent and Trademark Office during the prosecution of these patents.

According to PacBio, during the prosecution of the '596 patent, Helicos lawyers submitted an information disclosure statement with 913 references, which it says Helicos should have known the patent examiner would be unable to review.

The list contained "key material prior art," including references to patent applications by Rosenthal et al., Rabani, and Garland et al. PacBio alleged that Helicos "failed to adequately disclose such key material prior art by intentionally burying those references in an [information disclosure statement] containing 913 references, most of which were irrelevant."

After the patent examiner objected to the length of the list, Helicos' attorneys submitted an abridged statement with only 30 prior art references, omitting "key material art," according to PacBio, including the three references, which it said each invalidate the first claim of the '596 patent.

Helicos was aware of the importance of the Rosenthal, Rabani, and Garland references, PacBio claimed, because it cited them in an earlier patent opposition to a European patent, EP 1105529, which PacBio said is related to the '596 patent, and because the Rosenthal reference was cited by the patent examiner during the prosecution of the '560 patent, which deals with similar methods as the '596 patent.

As part of the prosecution of the '560 patent, Helicos submitted two information disclosure statements with 817 references in total, PacBio said, including "key material prior art," for example the Rabani reference, which it said was "buried" in this list. PacBio claims that the Rabani reference invalidates several claims in the '560 patent and was cited by Helicos during its opposition to the EP 1105529 patent, which PacBio claimed "is directed to the same general technology as the '560 patent." In addition, PacBio alleged, Helicos misrepresented the content of the Rosenthal reference during the prosecution of the '560 patent.

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Illumina also argues in its countersuit that the claims of the '560 patent "were allowed through inadequate disclosure of key material prior art, particularly with respect to the Rabani reference."

PacBio demanded a jury trial and asked the court to declare that it does not infringe the four patents, and that the patents are invalid or unenforceable. Also, it asked the court to enjoin Helicos from enforcing the patents against it, and to be reimbursed for attorneys' fees.

Earlier this month, Helicos responded to PacBio's counterclaims, denying any inequitable conduct and other allegations. It insisted that PacBio has been willfully infringing the four patents, which it said are valid and enforceable. Helicos also asked for PacBio's counterclaims to be dismissed and to be awarded attorneys' fees.

On Dec. 8, the court ordered a scheduling conference for Jan. 13, 2011.

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

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