A Diagnostics & Imaging Week

Third Wave Technologies (Madison, Wisconsin) reported that a federal jury has found life science research provider Stratagene (La Jolla, California) liable for willful patent infringement, and that it has awarded Third Wave $5.3 million in damages.

Third Wave said that, based on the verdict of willful infringement, it will seek additional damages.

The company said that, with the ruling, its “unique position in nucleic acid testing has been galvanized.” It said that with the expiration of patents for basic polymerase chain reaction (PCR), it is “one of a very few companies that can leverage its nucleic acid testing chemistry – the Invader technology – with basic PCR.”

Stratagene this week issued a statement saying that it will appeal the verdict, heard in U.S. District Court for the Western District of Wisconsin, and that it is pursuing a countersuit vs. Third Wave.

The jury decision, issued on Aug. 31, ruled that Third Wave’s U.S. patent nos. 6,090,543 and 6,348,314 are valid and that certain embodiments of Stratagene’s FullVelocity technology infringe those patents.

Other details of the decision, including the possibility of an injunction on sales of certain FullVelocity products, and a motion filed by Stratagene pertaining to jurisdictional issues are being considered by the judge presiding over the case, Stratagene said, and that “[t]he timing of a final judgment has not yet been determined.” Stratagene said that the sale of products incorporating the infringing products have been less than $400,000 since inception.

Third Wave filed suit against Stratagene in September 2004, alleging infringements by Stratagene’s FullVelocity QPCR and QRT-PCR products. Third Wave said it now seeks a permanent injunction and destruction of those Stratagene products.

“The positive outcome of this trial for Third Wave underscores the value of the Invader chemistry in the emerging nucleic acid testing market,” said John Puisis, president and CEO of Third Wave. “With the sensitivity of off-patent PCR and the specificity of the Invader chemistry, Third Wave has the unique opportunity to offer better technology than TaqMan, the current industry-leading NAT chemistry. This ability enables Third Wave to develop the best-performing products that set a new standard for the industry.”

Invader technology is used to measure DNA and RNA, with Third Wave saying that the technology is protected by more than 45 patents, with more than 100 more pending.

Stratagene in its statement said the verdict and the damages awarded were not supported by the facts of the case. It said it would file an appeal in the Court of Appeals for the Federal Circuit in Washington, once a final judgment has been entered by the District Court.

The company also said that it had served Third Wave with the lawsuit that Stratagene filed on May 6 for infringement of Stratagene’s patents covering its FullVelocity technology for the quantitative detection of nucleic acids. The suit, filed in the U.S. District Court for the District of Delaware, seeks monetary damages as well as a permanent injunction against continued infringement by Third Wave for the sale of its Invader Plus products.

Stratagene acknowledged that by appealing the verdict and pursuing a countersuit against Third Wave, it would incur additional legal costs that will impact its operating earnings.

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