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Illumina Countersues Life Tech, Claims SOLiD Infringes Four Patents

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Julia Karow

This article was originally published Oct. 15.

Illumina countersued Life Technologies last week in response to a patent lawsuit that Life Tech filed against Illumina last month.

In the countersuit, Illumina claims that the Applied Biosystems SOLiD sequencing system infringes four patents held by Illumina's wholly-owned subsidiary Solexa.

Illumina and Life Tech have also appealed a court decision earlier this year in another patent dispute between the two sequencing instrumentation vendors, originally filed by Applied Biosystems against Solexa in late 2006 (see In Sequence 2/3/2009).

Illumina's counterclaims last week come in response to a patent-infringement suit that Life Tech and a number of patent owners filed against Illumina and Solexa last month, claiming that the Illumina Genome Analyzer infringes three DNA amplification patents to which ABI, which Life Tech acquired last year, holds exclusive licenses (see In Sequence 9/29/2009).

Illumina and Solexa, in their response, denied all patent-infringement allegations and claimed that the patents are invalid "because they fail to satisfy the conditions for patentability." The firms requested a jury trial.

In addition, they claimed that the ABI SOLiD infringes four patents owned by Illumina: US Patent Nos. 6,831,994 and 6,654,505, both entitled "System and apparatus for sequential processing of analytes," which issued in 2004 and 2007, respectively, and were originally assigned to Lynx Therapeutics, which merged with Solexa in 2005; No. 7,232,656, "Arrayed biomolecules and their use in sequencing," which issued in 2007 and is assigned to Solexa; and No. 7,598,035, "Method and compositions for ordering restriction fragments," which issued this month and is assigned to Solexa.

Illumina said the four patents, which expire between December 2017 and July 2019, belong to three different patent families and apply to various aspects of the SOLiD system, in particular sample preparation, data gathering, and genome analysis.

The company seeks a permanent injunction against further sales of the SOLiD system, the destruction of infringing SOLiD system products and materials, and damages for the infringement of the patents by Life Tech and ABI.

It also seeks a declaratory judgment stating that Illumina does not infringe the three Life Tech patents and that those patents are invalid.

Of note, the inventor of the '035 patent, Stephen Macevicz, a former ABI employee, was a defendant, along with Ilumina and Solexa, in ABI's 2006 suit regarding ownership of three different patents, all entitled “DNA sequencing by parallel oligonucleotide extensions.”

In February, that trial, which had two phases, came to a close after a jury decided that Illumina owns all three patents; that one of the patents, No. 6,306,597, is invalid; and that ABI's SOLiD technology infringes none of them.

However, in March Solexa filed an appeal with the US Court of Appeals for the Federal Circuit, which it amended in April, saying it disagrees with the final judgment regarding the '597 patent.

ABI, in March, also filed an appeal, against the court's order denying it a new trial; regarding invalidity of a claim in one of the patents at stake, No. 5,969,119; and regarding the judgment that ABI is not the rightful owner of the patents.

"While we strongly prefer to compete in the marketplace rather than in the courtroom, we are determined to protect our position in the market so that our customers can continue to benefit from the technological advances Illumina has brought to the field of DNA sequencing," said Illumina President and CEO Jay Flatley in a statement on last week's countersuit . "We also stand ready to assert our patent rights in court whenever necessary."

"We believe these claims are without merit and we will vigorously defend our intellectual property," a Life Technologies spokesperson told In Sequence via e-mail, adding that the company has no further comment on Illumina's countersuit.

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