Monday, November 26, 2012

Life Technologies Sues Promega for Infringing Reissue Patent Claiming Fluorescence-Based Nucleic Acid Analysis


On November 19, Life Technologies Corporation and the California Institute of Technology sued Promega Corporation in the Central District of California for allegedly infringing US Patent Re-Issue No. 43,096, entitled "Tagged Extendable Primers and Extension Products."  RE43,096 issued on January 10, 2012, as a reissue of US patent number 6,200,748, which issued on March 13, 2001 and is based on an application filed June 7, 1995 (and hence eligible for a term of 17 years from the date of issuance). The application claims priority back to an application originally filed January 16, 1984, which has been the basis for multiple patents, including US patent number 5,821,058, which was recently the subject of an interference between Enzo Life Sciences and Life Technologies (the Board of Patent Appeals and Interferences decided the interference in favor of Life Technologies in 2010).

The patent came out the Caltech laboratory of Leroy Hood, and includes as inventors notable figures in the development of fluorescence-based automated DNA sequencing such as Prof. Hood and Michael Hunkapiller, the former president of Applied Biosystems who was recently named CEO of next-generation DNA sequencing company Pacific Biosciences. The reissue patent claims methods and reagents useful in fluorescence-based nucleic acid analysis. The complaint alleges that Promega infringes by offering various products for genetic assays and analysis, including those sold under the brands "PowerPlex,” “StemElite” and “CellID.”

According to the complaint, the predecessor of RE43,096, the ‘748 patent, it was the subject of prior litigation between the companies that commenced in 2001 and was ended by a settlement between the parties.  According to Life Technologies, as part of the settlement Prometa agreed to pay royalties on the sale of certain products after the reissuance of the ‘748 patent.  Life Technologies complains that Promega has refused to pay these royalties.