By James DeGiulio --
Former Professor Fails to Dismiss St. John's Patent Research Suit
Sanford Bolton, a former professor at St. John's University, and graduate student Spiridon Spireas have failed to dismiss a fraud and breach of contract suit by St. John's, accusing them of secretly patenting research done at the university and collecting more than $100 million dollars in patent licensing fees. Bolton was a professor at St. John's from 1980 through his retirement in June 1994, and Spireas, his graduate student, completed a masters and a doctoral degree at the university.
The pair filed their first patent in June 1996 as joint inventors and formed a startup company called Hygrosol in January 1997. Their research at St. John's allegedly resulted in four patents: U.S. Patent Nos. 5,800,834; 5,968,550; 6,096,337; and 6,423,339. In November 2008, the university filed suit in the Supreme Court of the State of New York, alleging that Spireas had developed a patentable process for creating powdered forms of liquid medications while at the university. St. John's claimed that Spireas and Bolton concealed the research in breach of their research and employment agreements. In December 2008, the suit was removed to the U.S. District Court for the Eastern District of New York. In its complaint, the university argued that Bolton and Spireas had a duty to assign patentable discoveries and inventions to the university, and that the university was entitled to 30% of revenue generated by the inventions. Hygrosol has received at least $100 million in revenue from licensing agreements. The defendants filed a motion to dismiss for failure to state a claim.
On December 10, in a lengthy opinion, Judge Nicholas G. Garaufis found that the university's complaint adequately alleged its claims against the defendants, noting that every defense raised by defendants implicates a question of fact that cannot be resolved by the Court on a motion to dismiss. Judge Garaufis noted that under New York law, St. John's had sufficiently alleged that Bolton and Spireas breached their contractual obligations to assign patentable inventions to it. One piece of evidence that Judge Garaufis pointed to was Spireas's dissertation, which contains sections literally copied into one of the patents. The judge also found that Bolton and Spireas were fiduciaries of St. John's, and owed it a duty to fully disclose material facts relating to their research. Judge Garaufis's memorandum and order can be found here.
Affymetrix Granted Summary Judgment for Noninfingement of Illumina Gene Sequencing Patents
Affymetrix Inc. successfully avoided infringement of two Illumina Inc. patents covering gene-sequencing technology, after Affymetrix's microarrays were found not to meet all elements of the asserted claims. In May 2009, Illumina brought suit in the U.S. District Court for the Western District of Wisconsin, alleging that Affymetrix's GeneChip HT array plate and array plate scanner infringe U.S. Patent No. 7,510,841 (see "Court Report," May 17, 2009). On November 3, 2009, Illumina brought a second lawsuit against Affymetrix, accusing them of infringing U.S. Patent No. 7,612,020, which has the same specification as the '841 patent, and which was issued to Illumina on the same day it filed the complaint (see "Court Report," November 8, 2009). Judge Crabb approved the parties' joint motion to consolidate these cases on November 12, 2009. Affymetrix filed a motion for summary judgment on the ground of noninfringement.
On December 14, Judge Barbara B. Crabb granted Affymetrix's motion for summary judgment of noninfringement because the undisputed facts show that the accused products do not include a "substrate," as required by each of the asserted claims. Further, Judge Crabb found that the defendant's microarrays do not use beads. Affymetrix's expert testified that modifying the accused products to meet this specification would destroy the arrays. Judge Crabb additionally rejected Illumina's argument that even though the modification might destroy the array, this did not mean the Affymetrix product could not be altered to use beads. Judge Crabb's opinion and order can be found here.
Bayer Settles with Teva in Multiple Yaz Patent Disputes
Teva has settled a patent infringement suit brought by Bayer over Teva's plans to bring a generic version of the oral contraceptive Yaz to market. On June 1, 2010, Bayer filed a suit in the U.S. District Court for the District of Delaware against Teva, alleging infringement of U.S. Patent Nos. RE37,564; RE37,838; and RE38,253, after Teva launched a generic version of Yaz (see "Court Report," June 6, 2010). In response, Teva asked for a declaratory judgment that the three patents were invalid and that Teva had not infringed them. Bayer sought to delay the release of Teva's generic version of Yaz until June 30, 2014, when the three asserted patents expire. According to court documents from a related case in Nevada, Teva had entered a supply and licensing agreement with Bayer that gave it the right to launch a version of Yaz on July 1, 2011, but also allowed earlier launch under certain circumstances. Bayer argued that those conditions had not been met.
On December 13, Judge Kent J. Dawson of the U.S. District Court of Nevada signed an order that dismissed the infringement case with prejudice. Also on December 13, Judge Naomi Reice Buchwald of the U.S. District Court for the Southern District of New York filed a similar order that dismissed with prejudice a related case in that district. The terms of the settlement were confidential. Judge Buchwald's stipulation and order can be found here.
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