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Illumina Settles One Patent Dispute With Qiagen; Faces Separate Suit From Columbia, Qiagen

NEW YORK (GenomeWeb) – Illumina has settled one patent infringement lawsuit with Qiagen over next-generation sequencing technology, but faces a separate suit from Columbia University, which has sued it for infringing a recently awarded patent exclusively licensed to Qiagen.

In last week's settlement of an ongoing case in the US District Court for the Northern District of California, Qiagen agreed not to sell its GeneReader and reagents in the US. However, as Qiagen announced last year, it has been developing a new chemistry based on different technology than is included in the settled litigation, and currently offers the upgraded chemistry with the GeneReader for US customers. Financial terms of the settlement were not disclosed.

John Gilardi, vice president and head of corporate communications and investor relations for Qiagen, said that the company is "pleased with the settlement." However, given that Qiagen had already upgraded its chemistry, "this settlement does not change our ability to offer the new chemistry to customers and the benefits of the GeneReader NGS system, and we continue to believe that we have freedom to operate."

He added that the firm plans to launch five new panels this year for breast, ovarian, and lung cancer, and will also offer the chemistry upgrade to customers in other countries. 

Gilardi declined to comment on the new patent infringement suit brought by Columbia and Qiagen against Illumina. In that suit, filed in the US District Court for the District of Delaware, the plaintiffs allege that Illumina's NGS systems and reagents infringe US Patent No., 9,708,358, "Massive Parallel Method for Decoding DNA and RNA," which was issued to Columbia earlier this month and which Qiagen exclusively licenses.

Specifically, the patent covers nucleotide analogues that can be used in sequencing-by-synthesis reactions, including the use of modified nucleotides with removable caps and detectable labels.

In the suit, the plaintiffs request damages for the alleged infringement, including royalties, as well as an injunction that prohibits Illumina from selling instruments and reagents that infringe, and payment of attorney' fees.

Illumina, Columbia, and Qiagen have been caught up in patent infringement suits for the last five years. Columbia first sued Illumina in 2012, claiming the firm infringed on five patents it had licensed to Intelligent Bio-Systems, which Qiagen subsequently purchased. Illumina countersued later that year, claiming that Columbia, IBS, and Qiagen infringed on three of its patents.

In 2014, the US Patent and Trademark Office and the Patent Trial and Appeal Board deemed a number of claims from patents held by either side invalid. And, after Qiagen commercially launched the GeneReader, Illumina sued again.

Then, last year, a federal court issued a preliminary injunction against Qiagen, halting the sale of its GeneReader instrument in the US. Several months later, though, Qiagen said it was developing new chemistry for the GeneReader, which it launched in the US early this year.