A Diagnostics & Imaging Week

Affymetrix (Santa Clara, California) reported that the U.S. District Court for the District of Delaware has returned a verdict in its favor in its patent infringement suit against Illumina (San Diego). Illumina immediately issued a statement that it would appeal that verdict.

The jury ruled that Illumina's arrays, scanners, software, and related products infringed on one or more claims of all five of Affymetrix's patents involved in the suit — 5,535,531, 5,795,716, 6,355,432, 6,399,365, and 6,646,243. The jury found that the proper royalty rate was 15%, and awarded total damages of more than $16 million for the period 2002 to 2005.

Jay Flatley, CEO of Illumina, expressed disagreement with the verdict and promised an appeal, saying that the finding "was made without consideration of the validity and enforceability of any of the patents asserted by Affymetrix. That infringement finding is therefore preliminary. With respect to damages, Illumina notes that the jury rejected Affymetrix's request for lost profits and awarded less than half of the total damages sought by Affymetrix in this trial."

He added that Illumina "acted properly with respect to these Affymetrix patents and that, ultimately, our position will be vindicated. In the meantime, we will continue to defend and support our customers against Affymetrix's unfounded claims, and are currently engaged in other proceedings against Affymetrix both at the U.S. and European Patent Offices to ensure that Illumina's patent rights prevail and to limit Affymetrix's overly broad approach to patent protection."

Kevin King, president of the life sciences business and executive VP of Affymetrix, said: "We have always believed, and continue to believe, in the strength of our intellectual property. We remain confident of our position in the next phases of the trial."

Both companies noted that the trial will proceed to a follow-on phase later in 2007.

In its statement Affymetrix said that in this phase it would focus on the validity of its patents "and whether Illumina's infringement was willful." It said it also has requested injunctive relief in this case, which will be taken up at the conclusion of all phases of the trial.

Flatley said the next trial phase would give Illumina "the opportunity to demonstrate that the jury's infringement verdict should not stand because these claims are invalid and unenforceable. In the meantime, we will continue to sell the products that are the subject of this suit and no damages will be payable to Affymetrix until all appropriate appeals have been taken."

Affymetrix is the developer of GeneChip microarray technology, a tool for analyzing complex genetic information.

Illumina develops tools for the large-scale analysis of genetic variation and function.

In other legalities:

Codon Devices (Cambridge, Massachusetts), a maker of synthetic genetic materials, last week reported filing suit against Blue Heron Biotechnology (Bothell, Washington) in U.S. District Court in Delaware, alleging that Blue Heron's Genemaker gene synthesis platform infringes five of Codon's U.S. patents.

Codon's lawsuit seeks unspecified monetary damages, and it has asked the court to mandate Blue Heron to cease infringement. Codon says that the patents, which cover DNA error correction, are exclusively licensed to it.

On Friday, Blue Heron issued a statement saying that it had "performed and initial assessment of Codon's claims and believes that there is no basis in fact for the allegations …"

John Mulligan, Blue Heron's founder and CEO said, "In its eight years of operation, Blue Heron has always maintained the highest levels of integrity in matters of intellectual property development and application, and we are confident that Codon's action will be shown to be without merit. Blue Heron intends to vigorously defend against these baseless claims of patent infringement."

Blue Heron said it expects no material impact on its current and future business or on its customers.

Codon manufactures products such as gene libraries and synthetic cells for customers in the pharmaceutical, agriculture, chemical, and energy industries.

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