Tuesday, December 18, 2012

Life Technologies Sues Promega for Declaratory Judgments Relating to Cell Line Authentication Kits


Last February, I reported that a district court had ordered Life Technologies to pay $52 million in damages to Promega, based on a finding that Life’s AmpFLSTR PCR kits infringe multiple Promega  patents.  These kits use single tandem repeat (STR) technology to produce genetic fingerprints, useful in a variety of applications, such as forensics and paternity testing.

In September, the court vacated the award of damages, finding that as a matter of law Promega had failed to present sufficient evidence proving that infringing products were made or sold in the United States, or imported into the United States (as summarized here) . The decision is currently on appeal to the Federal Circuit.

Yesterday, Life Technologies filed two declaratory judgment lawsuits seeking a ruling that the company will not be liable for infringing the same Promega patents based on the launch of a new line of Life Technologies product, which will be sold under the trade name AuthentiFiler.  According to the complaints, AuthentiFiler employs STR technology to authenticate/identify the origin of cell lines, providing important validation of cell lines used in biotechnology processes.

One of the lawsuits, filed in the Southern District of California, seeks a declaration that US Patent Numbers 5,843,660; 6,221,598; 6,479,235; and 7,008,771 are not infringed by AuthentiFiler. These are patents that were asserted in the AmpFLSTR lawsuit. According to the complaint, the AuthentiFiler products utilize a different set of STR loci than used in the AmpFLSTR products, and these loci "do not overlap with those required by the claims of the Patents-in-Suit.”

The second lawsuit was filed in the Central District of California, and involves another patent asserted in the AmpFLSTR litigation, Re37,984.  According to the complaint, this patent was exclusively licensed by Max-Planck-Gesellschaft to a company called Research Genetics pursuant to a 1993 license agreement. In 1996, Research Genetics granted Promega exclusive and nonexclusive rights under the patent in certain fields. According to the complaint, Research Genetics retained rights under the patent in other fields, including uses in cell line authentication/identification. Research Genetics was subsequently acquired by Life Technologies, and Life Technologies alleges that under the 1996 agreement the company retains the right to use the patented technology in the AuthentiFiler products. Promega evidently disputes this interpretation of the import of the license agreement.

In this second lawsuit, Life Technologies is asking the court to declare that Promega must agree to arbitrate the licensing dispute (pursuant to an arbitration clause in the agreement), and also for a declaration that, pursuant to the 1996 agreement, Life Technologies is licensed under the ‘984 patent to commercialize products for use in authentication/identification of cell lines, including the AuthentiFiler system.