LONDON - Oxford Gene Technology Ltd. (OGT) won the first round in its patents battle with Affymetrix Inc. with a ruling in the High Court in London that Affymetrix does not hold a valid license to OGT's DNA microarray technology.

Affymetrix, of Santa Clara, Calif., said it will appeal the finding that its purchase of the microarray interests of Beckman Coulter Inc. (BCI), of Fullerton, Calif., in 1999 was not sufficient to transfer BCI's license. The court held that the microarray research program was not a business, and so its acquisition by Affymetrix did not trigger the assignment provision permitting the transfer. The decision will have no immediate impact on Affymetrix's business.

OGT, based in Oxford, is taking parallel proceedings in the U.S., which are due to be heard in the Federal Court in Delaware in October.

OGT's legal actions are being funded by the computer company Hewlett-Packard (HP) under a license agreement OGT signed in December with HP's newly formed subsidiary, Agilent Technologies Inc. Agilent needs access to the microarray technology as part of its plan to build on its position in ink-jet printing to enter the DNA array market. OGT's patents cover the use of computer-controlled printing to produce arrays.

Using ink-jet printing techniques to lay down DNA on chips is expected to be far more efficient and cheaper than existing production techniques. Agilent said it will be able to design and produce customized oligonucleotide arrays, representing thousands of genes per array, in a matter of days.

Edwin Southern, chairman and majority owner of OGT, which was spun out of Oxford University, wants to see DNA microarray technology widely licensed. Apart from Agilent it has granted licenses to Incyte Genomics, and is in negotiations with a number of other companies. "Microarray technology is proving to be a major advance in genetic analysis and I am keen to see the technology realize its full potential," Southern said. "We cannot allow infringements of our patents to go unchallenged. This would not be fair to others who have willingly entered into license agreements with us."

Vern Norviel, senior vice president and general counsel of Affymetrix, said last week's ruling "is merely the first step in a long process. Affymetrix has the strongest DNA array patent portfolio in the field, with more than 70 issued patents and several hundred pending applications, and the ruling has no impact on [our] commanding intellectual property estate."

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