IP Law Daily, PATENT—W.D. Wash.: Verdict that company infringed biotech research technology was supported by evidence, (Nov 5, 2013)

By Thomas Long, J.D.

A jury verdict finding biotech company Illumina, Inc. liable for infringing a patent for arrays used in diagnostic and drug discovery systems has been allowed to stand by the federal district court in Tacoma, Washington (Syntrix Biosystems, Inc. v. Illumina, Inc., November 4, 2013, Settle, B.). Illumina’s motion for judgment as a matter of law or new trial was denied.

Plaintiff Syntrix Biosystems, Inc. owned U.S. Patent No. 6,951,682 (“the '682 patent”), entitled “Porous Coatings Bearing Lig and Arrays and Use Thereof.” Syntrix filed its infringement suit against Illumina on November 24, 2010. In a June 11, 2012 claim construction order, the court declined to adopt Illumina’s proposed limitations for the terms “gelled network” and “porous coating.” With regard to “gelled network,” the court declined to construe the term to exclude “a planar, two-dimensional configuration of particles.” With regard to the term “particles,” the Court declined to construe the term to exclude objects having a size greater than 1,000 angstroms.

The court construed “gelled network” as “an aggregation of particles linked together to form a porous three-dimensional network. Particles may be linked covalently or noncovalently through the use of a polymeric binder. Alternatively, particles may be linked covalently or noncovalently without the use of a binder, through interactions of chemical groups on the surface of the particles.”

The court construed “porous coating” as “a coating that is rigid, does not swell, and contains void regions ranging from 1 to 1500 nm in diameter resulting in porosities ranging from 0.15 to 0.99, where porosity is defined as the fraction of the coating volume which has pores.”

On February 7, 2013, the court denied Illumina’s motions for summary judgment on the grounds that (1) the asserted patent claims were invalid and (2) the '682 patent had a priority date no earlier than December 1, 1998.

After a jury trial in February and March 2013, the jury returned a verdict in favor of Syntrix. Specifically, the jury found that the '682 patent was infringed, the patent was not invalid, and that Syntrix was entitled to a reasonable royalty of 6% for past infringement.

Infringement

In support of its motion for JMOL, Illumina contended that its accused product (“the BeadChip”) did not meet the “gelled network” requirement because it lacked the “aggregation of particles linked together to form a porous three-dimensional network” required by the asserted claim. However, Syntrix’s expert testified at length about how the BeadChip met both the requirements of a three-dimensional network and an aggregation of particles linked together. Although Immunia’s expert provided contrary interpretations of the '682 patent, Syntrix’s evidence was sufficient to sustain the jury verdict, the court said.

Illumina challenged the evidence on the “porous coating” limitation on four grounds: (1) the BeadChip did not have two distinct layers; (2) the BeadChip did not have a continuous coating; (3) the BeadChip did not have a substantially uniform thickness; and (4) the BeadChip did not have void regions. The court denied Illumina’s motion on this issue because Syntrix’s expert testified that the BeadChip did, in fact, have the first three characteristics, and the fourth ground had already been resolved in Syntrix’s favor.

Invalidity

The court rejected Illumina’s arguments that the '682 patent was invalid for (1) lack of adequate written description; (2) a priority date no earlier than December 1, 1998; and (3) anticipation.

Adequate written description. Illumina argued that the patent lacked an adequate written description because (1) the inventor disclaimed particles less than 1,000 angstroms and (2) the patent did not describe monolayers of beads. Both of these were issues of law that were addressed in the court’s claim construction order. The court declined to review its claim construction rulings.

Priority date. The substance of Illumina’s argument regarding priority was that the patent was not entitled to a priority date before the asserted prior art references (“the Walt patents”). However, in the court’s view, Syntrix produced sufficient evidence of conception before the priority date of those references and reasonable diligence over the entire period from just before the priority date of the references through the date of the inventor’s reduction to practice. The inventor testified that, in drafting the patent application, he relied on numerous sources other than the prior art references, and this evidence corroborated the inventor’s diligence from at least the prior art priority date of September 11, 1998. In addition, the prior art was reduced to practice in “late 1996” and the application was filed in March 1997. Therefore, Illumina’s motion was denied on this issue.

Anticipation. Illumina argued that the '628 patent was anticipated by the Walt patents. However, because the '628 patent was entitled to a priority date before the Walt patents, the Walt patents were not prior art and may not be relied on to invalidate the '628 patent as anticipated, the court held.

Reasonable Royalty

Syntrix met its burden of producing sufficient evidence to support the reasonable royalty of 6%, according to the court. It was undisputed that this royalty rate was based off of Illumina’s license with Tufts University. Pursuant to that agreement, Illumina had licensed two Walt patents, in addition to other patents. Illumina’s argument that the '682 patent was anticipated and/or obvious in light of the Walt patents essentially was an admission that the technologies were related, the court said.

Syntrix’s expert provided testimony justifying the difference between the 6% royalty the jury awarded and the 3% royalty in the Tufts license. According to the expert, different bargaining positions existed when technology was commercialized, rather than when the licensee did not have a product on the market yet. The court determined that the higher royalty rate awarded by the jury was not unreasonable.

The case is No. C10-5870 BHS.

Attorneys: Anant Saraswat (Wilmer Cutler Pickering Hale & Dorr) for Syntrix Biosystems, Inc. Eric M. Fraser (Osborn Maledon, PA) for Illumina, Inc.

Companies: Syntrix Biosystems, Inc.; Illumina, Inc.

Cases: Patent WashingtonNews