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Jury Confirms Illumina's Ownership of IP Relating to ABI's SOLiD

NEW YORK (GenomeWeb News) - Illumina has won the first phase of a trial that involves plaintiff Applied Biosystems and defendants Illumina, Solexa, and ABI's former IP counsel Stephen Macevicz regarding ownership of intellectual property relating to ABI's SOLiD sequencing system, GenomeWeb Daily News has learned.

An Illumina spokeswoman confirmed by e-mail today that "a federal jury has determined that Illumina owns the patents that are the subject of the suit with Applied Biosystems, and that the case has now moved on to the infringement phase."

A spokeswoman for Life Technologies, the firm formed by the recent merger of ABI and Invitrogen, told GenomeWeb Daily News by e-mail that while the firm is "disappointed with this outcome, we're looking forward to making our case in phase II" of the trial. The spokeswoman said that the company has no further comment until the trial is concluded.

The dispute started in late 2006, when ABI sued Macevicz in a California state court for allegedly stealing intellectual property belonging to the company, his employer at the time, by failing to disclose a patent application he filed in his name in 1995.
Macevicz assigned the patent application to his new employer, ABI spinoff Lynx Therapeutics, later that year, which merged with Solexa in early 2005. Illumina acquired Solexa in early 2007.

The patent application resulted in three patents that cover aspects of ABI's SOLiD technology, US Patent Nos. 5,750,341; 5,969,119; and 6,306,597, all entitled "DNA sequencing by parallel oligonucleotide extensions."

In 2007, ABI moved the lawsuit to a federal court, and Solexa filed three counterclaims, accusing ABI of willfully infringing all three patents with its SOLiD technology.

Last summer, the judge ordered a jury trial with two phases. The first phase was going to deal with the issue of ownership, the second with Illumina's infringement claims.

In August, the judge, in a summary judgment, ruled that ABI does not infringe the asserted claims of the '341 and '597 patents. However, he denied to rule that ABI does not infringe the first claim of the '119 patent. In a later statement, the judge clarified that his order applied only to ABI's two-base encoding technology, not its prototype one-base version.

At a final pretrial conference held in September, the judge ruled that the defendants will not be permitted to seek damages for alleged infringement of the '341 or '597 patents by the one-base encoding process. ABI withdrew its request regarding evidence of willful infringement after the defendants said their allegation of willful infringement is only directed at Agencourt Personal Genomics before ABI acquired it in 2006.

Edward Winnick contributed to this article.

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