AFFX loses against OGT on the Southern patent. This is very significant for both AFFX and INCY - note that INCY has a cross-license agreement with OGT:
Affymetrix Loses Patent Dispute to Oxford Gene Technology
OXFORD, England, April 7 /PRNewswire/ -- The English High Court today gave judgement in favour of Oxford Gene Technology Limited ("OGT") on the question of whether Affymetrix, Inc. (Nasdaq: AFFX) is licensed under various OGT intellectual property, including OGT's DNA microarray patents in Europe and the United States, numbers EP 373 203 and US 5,700,637. The Court held that Affymetrix is not licensed.
Specifically, the Court held that Affymetrix's attempts to obtain a licence under these patents through a complex series of agreements with Beckman Coulter, Inc. dating back to July 1998 were ineffective. Affymetrix had claimed that it had purchased Beckman Coulter's microarray business and with it a licence under OGT's patents granted to Beckman in 1991. The Court said that Beckman Coulter's microarray research programme did not amount to a business and so was not capable of transferring Beckman's existing licence to Affymetrix.
The English Court's judgement is effective not just in the UK and Europe, but also in the United States where OGT is taking parallel infringement proceedings against Affymetrix in the Federal Court in Delaware under its US patent number 5,700,637. The trial of this action is due to be heard in October 2000. The English Court's judgement resolves in OGT's favour the question of whether Affymetrix has a licence to the '637 patent and thus effectively decides Affymetrix's main defence to infringement, namely that it is licensed, in OGT's favour as well. OGT is vigorously pursuing the US infringement action.
Professor Edwin Southern, Chairman and majority owner of OGT, said: "OGT holds fundamental patents for DNA microarrays and methods of using them, and has a further allowed patent in the United States which is due to issue shortly covering arrays made both by in-situ synthesis and deposition. Microarray technology is proving to be a major advance in genetic analysis and I am keen to see the technology realises its full potential. We have already licensed our patents or granted options to a number of companies and are in negotiations with several others."
He added, "Affymetrix was offered a licence on reasonable terms but tried to improve its position by entering into a complex series of arrangements with one of our licensees. We challenged their actions in the Courts and I am pleased that our position has been upheld. We cannot allow infringements of our patents to go unchallenged: this would not be fair on others who have willingly entered into licence agreements with us." OGT has other actions pending against Affymetrix, aimed at releasing what OGT sees as Affymetrix's stranglehold on the development of microarray technology through its restrictive licensing policies. Professor Southern stated: "I respect the work that Affymetrix's scientists have done, but through their patents they are claiming rights over things they did not invent or are not patentable." The other actions include:
-- proceedings in the English High Court to revoke Affymetrix's UK patents
numbers, GB 2,248,840 and EP(UK) 0619 321, due to be heard in March
2001; and
-- opposition proceedings against Affymetrix's European patent
No. EP 0 619 321.
The main basis of these actions is that Affymetrix's patents are unduly broad, covering areas of microarray technology that they cannot validly claim to have invented.
/CONTACT: Nikul Odedra of HCC.De Facto Group for Oxford Gene Technology, +44-207-496-3300/
Here's the cross-license:
INCYTE AND OXFORD GENE TECHNOLOGY LTD CROSS LICENSE MICROARRAY AND GENE EXPRESSION PATENTS
Palo Alto, California, and Oxford, UK ? December 13, 1999 ? Incyte Pharmaceuticals, Inc. (Nasdaq: INCY) and Oxford Gene Technology Ltd, announced today that they have entered into a cross licensing agreement covering each other's microarray and gene expression technology patent portfolios. Financial terms of the agreement were not disclosed.
Under terms of the agreement, Incyte has licensed from Oxford Gene Technology patents for inventions made by Professor Edwin Southern of Oxford University. These pioneering patents date from 1988 and cover fundamental technologies for the microarray and gene expression fields. The "Southern Patents" will be licensed to Incyte co-exclusively for the creation of large databases of gene expression data which are licensed to multiple parties, and non-exclusively for all other uses.
Oxford Gene Technology will obtain non-exclusive licenses from Incyte under Incyte's microarray and gene expression patent portfolio, which includes patents and patent applications covering microarrays, methods of manufacture of microarrays, gene expression analysis, sample preparation, and for identifying disease-associated genes using hybridization assays, which include microarray-based analysis.
"This agreement provides Incyte co-exclusive rights to the Southern Patents for the creation of large gene expression databases for multiple licensing," said Lee Bendekgey, General Counsel and Interim CFO of Incyte. "We believe this patent portfolio will become one of the broadest in the microarray field, and that this license will give Incyte valuable freedom to operate as its microarray and expression programs expand and evolve. We are also pleased to be granting OGT a license to Incyte's extensive microarray and gene expression technology patent portfolio."
"We are delighted that this license to Incyte will widen access to array technology, especially for large-scale commercial high-density microarray products and services," said Ed Southern, Chairman of OGT. "In addition, this agreement gives OGT access to key intellectual property from Incyte covering a broad range of technologies associated with the production and use of microarrays."
Oxford Gene Technology was established to exploit the microarray and related technology arising from research carried out by Professor Southern and his team at the University of Oxford. In addition to its licensing activities OGT has recently established an operational arm under the leadership of Dr. Andy Millar to provide services to the pharmaceutical and other sectors in antisense discovery, probe optimization, resequencing and expression analysis, employing techniques developed by Dr. Southern and his team.
Peter |
