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Illumina, Qiagen, Columbia University Near Settlement in Patent Infringement Case

This story has been updated to include the full list of patents-at-suit.

NEW YORK – Qiagen and Columbia University have reached an agreement with Illumina to settle a 2019 lawsuit alleging patent infringement by Illumina.

"The parties have settled the case in principle," Jack Blumenfeld, an attorney representing Columbia, wrote in a June 8 letter to Judge Colm Connolly of the US District Court for the District of Delaware. He also asked for an amended case schedule to provide time to complete the settlement.

Terms of the settlement were not disclosed in the letter. An Illumina spokesperson said in an email that the company does not disclose the terms of any settlement. Qiagen declined to comment, and Columbia University did not immediately respond to a request for comment.

Whether the settlement has implications in other cases involving the parties is unclear.

Columbia and Illumina, in particular, have been waging an IP battle in court for nearly a decade. Columbia sued Illumina in 2012, alleging infringement of five sequencing patents licensed to Intelligent Bio-Systems, a company that was bought by Qiagen soon after. Illumina countersued, also alleging infringement.

In the suit that is now being settled, Columbia alleged Illumina infringed US Patent Nos. 10,407,458 and 10,407,459, 10,428,380, 10,435,742 and 10,457,984, all titled "Massive parallel method for decoding DNA and RNA" and exclusively licensed to Qiagen.

Over the years, Illumina has succeeded in invalidating several patents held by Columbia. In February, the US Court of Appeals for the Federal Circuit affirmed the US Patent and Trademark Office's Patent Trial and Appeals Board decision to invalidate five patents.

The PTAB has instituted inter partes review of the five patents-in-suit held by Columbia, at Illumina's request.