LONDON - Oxford Gene Technology Ltd. (OGT) said it will continue its legal challenges for patent infringement against Affymetrix Inc., despite a UK Court of Appeal judgement last week that Affymetrix has a valid license. This reversed an April 2000 High Court ruling that Affymetrix did not have rights to OGT's DNA microarray patents.

Andy Millar, CEO of OGT, told BioWorld International, "The decision changes the way the light shines on different elements of the litigation, and we have got to think about this. Our overall position is unchanged, but with regard to how we proceed we have to consider our position."

The Court of Appeal ruled that OGT, based in Oxford, England, could not appeal its decision, but OGT said it intends to seek the right to appeal to the House of Lords (the highest court).

Proceedings began in Delaware on Monday in a similar infringement case brought by OGT against Affymetrix in the U.S.

OGT's patents are based on the work of Ed Southern, founder of OGT, when he was employed by Oxford University. The university granted Beckman Coulter Inc., of Santa Barbara, Calif., a license in 1991. Affymetrix claimed it had rights to the patents through a July 1998 technology collaboration with Beckman. Southern, who by this time had set up OGT and gained full control of the patents from Oxford University, contested the claim that the license was transferable. At the beginning of June 1999 OGT filed its infringement case and in the same week Affymetrix purchased Beckman's microarray interests.

In the ruling last week, the Court of Appeal decided that Affymetrix was licensed from the date of purchase, but had no rights before this. Whether or not it gets the right to appeal to the House of Lords, OGT said it will continue to claim damages against Affymetrix in the U.S. and the UK for patent infringements prior to the date of the Beckman purchase, and estimated these will run into tens of millions of U.S. dollars.

Apart from contesting Affymetrix's rights to OGT's patents, OGT also is trying to get Affymetrix's own microarray patents declared invalid, on the grounds that they claim broad rights over microarrays in general, and if allowed to remain in place they would put a block on development of array technology. Proceedings in the English High Court to revoke Affymetrix's UK patents numbers GB 2,248,840 and EP(UK) 0619321, are due to be heard in March 2001. Opposition proceedings are in train against Affymetrix's European patent number EP 0619321, and OGT also has asked the U.S. Patent Office to declare an interference.

OGT's legal actions are being funded by Agilent Technologies Inc., the technology equipment business spun out of the computer company Hewlett-Packard Inc. earlier this year. The funding is part of the license agreement between OGT and Agilent for OGT's microarray technology.

Agilent plans to use OGT's technology to build on its position in ink jet printing to enter the DNA array market. Although the OGT patents cover the use of computer-controlled printing to produce arrays, there are concerns that Affymetrix makes such broad claims in its patents that the technology could be considered to fall within their scope.

Millar said the High Court ruling that Affymetrix holds a valid license to OGT's patents would not affect the ability of Agilent or OGT itself to develop products based on the technology. "Agilent is a good licensing partner and is pursuing its own business. We are doing very well using the technology to develop our own business. We have a number of customers and our business will continue and increase."

OGT's legal actions also have implications for Incyte Genomics Inc., of Palo Alto, Calif. Last December OGT and Incyte agreed to a cross-licensing deal covering their respective microarray and gene expression technologies. This gave Incyte the right to use DNA microarrays to develop bioinformatics databases for multiple licensing.

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