LONDON ¿ Oxford Gene Technology (OGT) Ltd. has filed lawsuits in the U.S. and U.K. against Affymetrix Inc., of Santa Clara, Calif., alleging infringement of two DNA microarray patents. OGT said it is seeking ¿substantial compensation¿ for what it believes are at least 17 months of infringing upon sales in the U.S. and Europe.
According to OGT, it held discussions with Affymetrix about the granting of a license when the U.S. patent was issued in December 1997, but the two had not made any agreement. Affymetrix then entered into an agreement in July 1998 with Beckman Coulter Inc., of Fullerton, Calif., which has a license from OGT that includes the right for further licenses to be granted to collaborative partners of Beckman. ¿We think that this agreement was set up purely as a means of getting the license on easier terms,¿ said Chris Shelley, OGT¿s legal representative at Manches Solicitors, in Oxford. He added that OGT does not think it is obliged to grant a license to Affymetrix under its agreement with Beckman.
Following the filing of the lawsuits last week, Affymetrix issued a press release, saying it had acquired Beckman¿s license. ¿We don¿t think that transfer is valid,¿ said Shelley.
The two patents are European Patent No. 0 373 203, entitled Apparatus and Method for Analysing Polynu cleotide Sequences and U.S. Patent No. 5,700,637, entitled Apparatus and Method for Analysing Polynucleotide Sequences and Method of Generating Oligonucleotide Arrays.
These patents, based on the work of Ed Southern, professor of Biochemistry at Oxford University, were filed by Isis Ltd., the technology transfer arm of the university. Isis granted an exclusive license to Beckman in 1991, but this was subsequently renegotiated in 1996 as a non-exclusive license, paving the way for the formation of OGT Ltd. in 1997 to exploit the technology.
OGT said it is prepared to grant Affymetrix a license under terms satisfactory to OGT, but believes Affymetrix has been trying to use a legal device to obtain better terms.