Vysis Gets Oncor Program In FISH Patent Settlement

By Mary Welch

Oncor Inc. and Vysis Inc. settled a long-standing patent infringement suit covering the use of fluorescence in situ hybridization (FISH), which is a method of simultaneously assessing multiple chromosomal and gene abnormalities in an intact cell.

As a result of the definitive settlement, Vysis received the assets of Oncor's non-oncology FISH genetics business as well as an admission that Vysis' patent is valid, enforceble and was infringed.

The suit was started in 1995 by Joe Gray and Dan Pinkel, the two University of California at San Francisco scientists who received the FISH patent, and Vysis, of Downers Grove, Ill., which is the exclusive licensee. The patent covers the sale and use of FISH assays using gene-specific DNA probes together with blocking DNA.

"Oncor was already in the business that related to the FISH product even before Vysis was," said John Bishop, president and CEO of Vysis. "But they didn't take a license out with the university and Vysis did. It turned out that the technology was extremely important."

Oncor had two businesses that used the FISH technology: its FISH genetic probe business and its human oncology side. Vysis now has the former (which had 1997 sales of about $3 million) while Oncor retains the latter. In addition, Oncor will pay a licensing fee of $500,000 within the next 30 days and another $1.5 million on April 9, 2000, to Vysis and the university.

The addition of Oncor's non-oncology FISH genetics operation expands Vysis' own FISH business and broadens its product lines, said Bishop.

Oncor Eager To Unload Non-Cancer FISH Business

For its part, Oncor said it was glad to get rid of the non-cancer applications. "Oncor had previously announced a strategy of repositioning in March and we deemed the non-oncology FISH business as not a part of our strategic strategy. We will have substantial cost savings with this divestiture," said Cecil Kost, Oncor's president and chief operating officer.

"This allows us to follow our strategic decision and focus only on oncology. And we are excited about intensifying our horsepower on the cancer franchise. The FDA approved our breast cancer test (INFORM HER-2/neu Gene Detection System) and we've got quite a rich pipeline with Johns Hopkins [University, in Baltimore]."

Kost said there would be layoffs as a result of the divestiture. He declined to give numbers.

As part of the settlement, Vysis gives Oncor nonexclusive, royalty-bearing licenses for the sale of Oncor's oncology FISH-based products (both clinical and research applications), including its Gene Detection System for breast cancer.

Oncor also obtained a nonexclusive, royalty-bearing license to certain direct labeling technology rights owned by Vysis. *