Trio of Patents Wins Enables Clients to Break New Ground in the Genetics Field

October 26, 2012

Mapping the human genome has created an industry involving technologies for the analysis of DNA. The market continues to change dramatically as the cost of individual genome mapping continues to come down, enabling the “holy grail” of personalized healthcare and diagnostics based on our individual genetic code.

Kaye Scholer represents several leading companies in this area including Complete Genomics and Affymetrix, and has recently secured three important wins for these clients.

On October 16, the firm won a California federal court order granting summary judgment invalidating all of Illimina Inc’s asserted DNA sequencing method claims from US Patent No. 6,306,597 on behalf of Complete Genomics, a company that is furthering the DNA Sequencing-As-A-Service model. In the summary judgment order, Judge Laporte accepted the argument Kaye Scholer had been making all along, that in reducing his invention to practice the alleged inventor of the patent in the suit failed to exercise due diligence and that, therefore, a prior art publication invalidated all of the primary asserted method claims (Claim 1 and dependent Claims 9, 10, 14, 15, 16, 17, 18 and 19) of Illumina's '597 patent. The Kaye Scholer team on this case was led by Partner Michael Malecek and included Associates Sean Boyle, and Marisa Armanino Williams.

For genome analysis technology leader Affymetrix Inc., Kaye Scholer also recently won two important victories in long-pending cases. After nine long years, the Southern District of NY granted a partial summary judgment of non-infringement on September 24. The ruling disposed of all pending patent infringement claims asserted by Enzo Life Sciences, Inc. against Affymetrix.

And in another case filed by MIT and E8 against Affymetrix in Boston, the Court issued a claim construction order on September 4 (3 years after the Markman hearing) which resulted in MIT and E8 stipulating to a final judgment of non-infringement by Affymetrix of U.S. Patent No. 6,703,228, entitled “Methods and Products Related to Genotyping and DNA Analysis.” In addition to Partner Mike Malecek, the litigation team for these Affymetrix matters consisted of Pete Root and Steve Holmes.

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