By Donald Zuhn --
Invitrogen Corporation and Agilent Technologies announced today that the California-based biotech companies have settled all three of their pending patent suits. Agilent Technologies became involved in the litigations through its 2007 acquisition of Stratagene, Inc., which was sued by Invitrogen in 2000 and 2001 and which brought suit against Invitrogen in 2001.
In the first of the three actions, Invitrogen filed suit against Stratagene in June of 2000 in the District Court for the District of Maryland, alleging infringement of U.S. Patent Nos. 5,244,797; 5,405,776; and 6,063,608. The '797 patent is directed to a polypeptide having DNA polymerase activity and substantially no RNase H activity, the '776 patent is directed to an isolated DNA encoding a polypeptide having DNA polymerase activity and substantially no RNase H activity, and the '608 patent is directed to an isolated polypeptide having DNA polymerase activity and substantially reduced RNase H activity. Invitrogen contended that Stratagene's use and sale of RNase H minus reverse transcriptase (RT) products infringed the '797, '776, and '608 patents. [Last May, we reported on the settlement of an 11-year old patent litigation battle between Invitrogen and Clontech that involved the same three patents.]
Less than a year later in March of 2001, Invitrogen sued Stratagene in the District Court for the Western District of Texas for infringement of U.S. Patent No. 4,981,797. The asserted patent in this case is directed to a process for producing transformable E. coli cells of improved competence, wherein the patent defines "improved competence" as an improved ability of the cells to take up exogenous DNA. In 2006, the Western District of Texas entered judgment for Invitrogen, awarding the company $16.2 million plus prejudgment interest, post-judgment interest, attorneys' fees, and costs, and entering an injunction against Stratagene for further infringement. Stratagene had appealed the lower court's decision.
The third action pending between the companies was a suit filed by Stratagene against Invitrogen in November 2001 in the District Court for the District of Maryland. Stratagene alleged infringement of U.S. Patent No. 5,556,772, which is directed to a kit for synthesizing polynucleotides comprising two DNA polymerases, one possessing 3'-5' exonuclease activity and one lacking 3'-5' exonuclease activity. Stratagene contended that Invitrogen's use and sale of certain DNA polymerase blend products infringed the '772 patent. This case had been stayed pending reissue proceedings.
Under the settlement agreement, Agilent will make an undisclosed payment to Invitrogen and will discontinue sales of its RNase H minus RT products, and Invitrogen will pay an undisclosed royalty and obtain a license to sell its DNA polymerase blend products. Further details of the settlement agreement were not disclosed.
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