NEW YORK (GenomeWeb) – Illumina has sued Qiagen, alleging that the company's GeneReader next-generation sequencing instrument infringes on a patent Illumina holds related to sequencing-by-synthesis technology, according to documents filed with the US District Court of the Northern District of California.
Illumina alleges that Qiagen's GeneReader infringes on US Patent No. 7,566,537, titled "Labelled Nucelotides," which describes a method of labeling nucleotides as part of the sequencing-by-synthesis technology underlying Illumina's instruments.
In its suit, Illumina alleges that Qiagen willfully infringed and is therefore entitled to a damages award three times the amount found by the court.
The lawsuit stems from a previous dispute between Illumina and Intelligent Bio-Systems and Columbia University, before Qiagen acquired Intelligent Bio-Systems.
The university originally sued Illumina in 2012, claiming the firm infringed on patents it had licensed to IBS. When Qiagen acquired IBS later that year, it took on that lawsuit. Subsequently, Illumina countersued IBS, claiming IBS infringed on several of its patents.
However, those lawsuits were essentially put on hold when IBS requested inter partes reviews of several of Illumina's patents, including the '537 patent.
In 2014, the USPTO appeals board invalidated eight claims in one of Illumina's patents under inter partes review, US Patent No. 8,158,346 and the Patent Trial and Appeal Board canceled eight claims in Illumina's US Patent No. 7,057,026.
The PTAB also ruled certain claims in the patents that Columbia asserted against Illumina as invalid in 2014, which Columbia appealed.
Early last month, the Federal Circuit upheld a February 2015 ruling by the PTAB that IBS "failed to satisfy its burden of demonstrating the obviousness of the challenged claims by a preponderance of the evidence," Circuit Judge Kathleen O'Malley wrote.
That opened the door for Illumina to sue Qiagen for infringing that patent. In Illumina's previous suit against IBS, it had dropped its claims against Qiagen because the firm essentially said that it was not responsible for IBS' actions. But now, Illumina alleges that Qiagen's GeneReader instrument, which was not commercially available at the time of the previous suit, infringes the '537 patent.
Illumina declined to comment on the lawsuit. In an email to GenomeWeb, Thomas Theuringer, Qiagen's senior director of public relations and digital communications, said that the company "believe[s] in the value of our intellectual property and are confident in our ability to expand our GeneReader franchise." He added that the suit was "an expected move" based on the previous ongoing intellectual property disputes between Illumina, Qiagen, IBS, and Columbia, and said that Qiagen would respond to the lawsuit in "due course."
In a research note, William Quirk, senior research analyst at Piper Jaffray, wrote that while patent infringement lawsuits are hard to predict, the fact that Illumina prevailed in the inter partes review increases its odds of winning the suit against Qiagen. If Illumina does win the suit, Quirk noted that Qiagen would likely "need to drastically alter the internals of GeneReader and/or remove the product from market."