A Diagnostics & Imaging Week

Illumina (San Diego) said that Judge Joseph Farnan of the U.S. District Court for Delaware has issued a Markman order in the litigation brought by Affymetrix (Santa Clara, California) against Illumina.

Affymetrix originally accused Illumina of infringing six patents, but withdrew its allegations pertaining to one of the patents earlier this year. The patents remaining in this case are U.S. patent nos. 6,646,243; 6,355,432; 5,545,531; 6,399,365; and 5,795,716 (the '716 patent).

The court's order interprets the disputed terms in the remaining patents asserted by Affymetrix. Illumina said the court adopted its position as to the proper interpretation of certain of the key terms in dispute.

Illumina said it believes the interpretations in the Markman order support the position it has taken throughout this case that it does not infringe Affymetrix's patents and that these patents are, in any event, invalid and unenforceable.

"We have strongly believed since this suit was filed that Affymetrix' allegations are without merit, and that this suit is a result of Affymetrix' unfortunate decision to compete in the courtroom rather than in the marketplace," said Jay Flatley, Illumina's CEO. "We believe this ruling supports our non-infringement and invalidity positions and counterclaims in this case and we look forward to obtaining favorable results to that effect."

Trial in the suit, which was filed by Affymetrix on July 26, 2004, is presently scheduled to begin on Oct. 16.

In its own press release on the judge's Markman order, Affymetrix said the court agreed with Affymetrix' proposed constructions for most of the 15 terms involved in the case and adopted only two of Illumina's proposed constructions. The company said the court's decision "affirms the breadth of Affymetrix' patent portfolio in covering the DNA microarray field and related technology.

Affymetrix also said that in a separate decision, the court denied Illumina's motion to dismiss the '716 patent for lack of standing. The court affirmed Affymetrix' ownership of and right to sue on the '716 patent.

"We are pleased with the court's Markman decision and look forward to proceeding to trial," said Barbara Caulfield, Affymetrix executive vice president and general counsel.