Probably more than you want to know about AFFX patents, suits, etc from their annual report to the SEC:
(abstracted)
INTELLECTUAL PROPERTY
Affymetrix has been issued 28 patents in the United States and holds severalpending United States patent applications. Many of these patents and applications have been filed and/or issued in one or more foreign countries. The Company is party to various option and license agreements with third parties (including Glaxo, Molecular Dynamics, Stanford University, Scientific Generics, Ltd., Concordia University, New York Public Health Research Institute, OncorMed, and the University of California) which give it rights to use certain technologies.
... the Company is aware of third-party patents that may relate to the Company's technology, including reagents used in probe array synthesis and in probe array assays, probe array scanners, synthesis techniques, oligonucleotide amplification techniques, assays, and probe arrays. In addition, the Company has received and may in the future receive notices claiming infringement from third parties as well as invitations to take licenses under third party patents.
The Company is aware of patents and patent applications owned by Oxford Gene Technology, Ltd that may relate to the Company's technology. The Company has opposed two such allowed European patents and such patents have also been issued in the United States. The Company is aware that other patents are pending and may issue. Certain of the applications have broad claims to certain array related technology.
On March 3, 1997, Hyseq, Inc. ("Hyseq") filed a lawsuit in United States District Court for the Northern District of California (San Jose Division) alleging that certain Affymetrix products infringe United States patents 5,202,231 and 5,525,464. In addition, in December 1997, Hyseq filed a second action claiming that certain Affymetrix products infringe a related patent, United States patent 5,695,940. The Hyseq actions and any other legal action against the Company or its collaborative partners claiming damages and seeking to enjoin commercial activities relating to the affected products and processes could, in addition to subjecting the Company to potential liability for damages,require the Company or its collaborative partners to obtain a license in order to continue to manufacture or market the affected products and processes. While the Company believes that the Hyseq complaints are without merit, there can be no assurance that the Company will prevail in the Hyseq actions or that the
Company or its collaborative partners will prevail in any other action, nor can there be any assurance that any license (including licenses proposed by third parties) required would be made available on commercially acceptable terms, if at all.
On January 6, 1998, the Company filed a patent infringement action in the United States District Court for the District of Delaware (No. 98-6) alleging that certain of Incyte, Inc.'s ("Incyte") and Synteni, Inc.'s ("Synteni") products infringe Affymetrix' United States patent 5,445,934. The action seeks to enjoin commercial activities of Incyte and Synteni relating to the Affymetrix patent.
There are a significant number of United States and foreign patents and patent applications in the Company's areas of interest, and the Company believes that there will be significant litigation in the industry regarding patent and other intellectual property rights. The Hyseq and Incyte and Synteni actions and any other such litigation will consume substantial managerial and financial resources, which could have a material adverse effect on the Company's business, financial condition and results of operations. Further, because of the substantial amount of discovery required in connection with any such litigation, there is a risk that confidential information could be compromised by disclosure.
Others have filed and in the future are likely to file patent applications that are similar or identical to those of the Company or those of its licensors. To determine the priority of inventions, the Company will have to participate in interference proceedings declared by the United States Patent and Trademark Office that could result in substantial cost to the Company. No assurance can be given that any such patent application will not have priority over patent
applications filed by the Company.
The following is Hyseq's version of the events in their suits against AFFX:
On March 3, 1997, the Company [Hyseq] brought suit against Affymetrix in the U.S. District Court for the Northern District of
California, San Jose Division, alleging infringement by Affymetrix of the Company's U.S. Patents No. 5,202,231 and
5,525,464 (Hyseq, Inc. v. Affymetrix, Inc., Case no. C 97-20188 RMW ENE, U.S. District Court). On May 5, 1997, the
Company filed an Amended Complaint. The suit alleges that Affymetrix willfully infringed, and continues to infringe, upon
these patents covering SBH technology. Through the lawsuit, the Company seeks both to enjoin Affymetrix from infringing
upon these patents covering SBH technology and an award of monetary damages for Affymetrix's past infringement. On May
19, 1997, Affymetrix filed an Answer and Affirmative Defenses to the First Amended Complaint and also filed a
counterclaim against the Company. The counterclaim seeks a declaratory judgment of invalidity and non-infringement with
respect to these patents covering SBH technology. On June 9, 1997, the Company filed a reply to the counterclaim in which it
denied the allegation of invalidity and non-infringement. While the Company believes it has made valid claims and has a
meritorious defense to the counterclaim, this litigation is at an early stage and there can be no assurance that the Company
will prevail in the claim. The Company and Affymetrix are currently engaged in pretrial discovery during which documents
are being exchanged and depositions will be taken.
On December 9, 1997, the Company filed a second lawsuit against Affymetrix, which alleges infringement by Affymetrix of
the Company's patent No. 5,695,940 (Hyseq, Inc. v. Affymetrix, Inc., Case No. C-97-4469 THE). Like the Company's first
action against Affymetrix, this action was filed in the U.S. District Court for the Northern District of California, San Jose
Division. Affymetrix was served with a summons and complaint in the Company's new case on December 9, 1997. Although
Affymetrix's answer to this complaint was due to be filed by December 30, 1997, it did not file its Answer, Affirmative
Defenses and Counterclaim until January 6, 1998. The counterclaim seeks a declaratory judgment of non-infringement,
invalidity and/or unenforceabilty with respect to the patent which Affymetrix is alleged to have infringed. On January 29,
1998, the Company filed a reply to the counterclaim in which it denied the allegations of non-infringement, invalidity and/or
unenforceability. The Company may incur substantial costs and expend substantial personnel time in asserting the Company's
patent rights against Affymetrix or others and there can be no assurance that the Company will be successful in asserting its
patent rights. Failure to successfully enforce its patent rights or the loss of these patent rights covering SBH technology also
could remove a legal obstacle to competitors in designing platforms with similar competitive advantages.
|
