Bloomberg News

Illumina, Myriad, Apple, Pinterest: Intellectual Property

March 27, 2012

Columbia University’s trustees sued the biotechnology analysis firm Illumina Inc. (ILMN:US) and accuse it of infringing five U.S. patents for gene sequencing used in medical research.

Illumina is wrongly using the protected technology, assigned to New York’s Columbia, the school said in a complaint filed yesterday in federal court in Wilmington, Delaware.

The patents, awarded since 2009, “are important to ongoing genomics research and discovery, particularly in the emerging field of personalized medicine, which seeks to use a patient’s own genomic DNA sequence information as the basis for individualized health care,” the university said.

Illumina, based in San Diego, is the subject of a $5.7 billion hostile takeover bid by Switzerland’s Roche Holding AG (ROG), an offer that expires on April 20, at $44.50 a share.

Columbia asked the court to award damages based on reasonable royalties and for an order to stop the infringement.

“We believe these claims are without merit, and we will defend against them vigorously,” Jennifer Temple, an Illumina spokeswoman, said in an e-mailed statement.

The case is Columbia v. Illumina, 1:12-cv-00376, U.S. District Court, District of Delaware (Wilmington).

Myriad’s Human-Gene Patent Rehearing Ordered by High Court

The U.S. Supreme Court (1000L:US) ordered a lower court to revisit whether human genes can be patented in light of the justices March 20 decision that limited the ability to obtain legal protection for some diagnostic medical tests.

The justices yesterday ordered the U.S. Court of Appeals for the Federal Circuit to reconsider its decision that allowed patents on genetic material used in Myriad Genetics Inc. (MYGN:US)’s tests for breast and ovarian cancer.

The high court on March 20 said that patents shouldn’t be allowed on tests that look at such things as the proper dosage for a medicine based on a body’s reaction to a drug. The Federal Circuit, which specializes in U.S. patent law, must consider the effect of that ruling on the Myriad patents.

The March 20 decision involved a dispute between Nestle SA’s Prometheus unit and units of the Mayo Clinic and whether certain types of diagnostic tests met the threshold of eligibility for a patent. A June 2010 decision by the Supreme Court also addressed what types of inventions qualify for legal protection.

Myriad said the case doesn’t involve all of its patents that cover the screening tests. Still, the company said, it would defend the claims that are the subject of the lawsuit.

The Myriad case pits the biotechnology industry, which supports gene patents, against an array of opponents --including doctors, researchers and patients -- who say gene patents will stifle innovation and improperly permit a monopoly on part of the human body.

The opponent group, whose legal team includes the American Civil Liberties Union, is pressing a test case against Salt Lake City-based Myriad. The company makes tests for the hereditary risk of breast and ovarian cancer.

The central legal issue is whether so-called isolated DNA - - genetic coding that has been removed from the body and separated from other material -- is a product of nature and thus ineligible for patent protection under previous Supreme Court rulings.

In court papers, Myriad has argued that “human intervention” brings isolated DNA within the scope of the U.S. patent laws. The company says the U.S. Patent and Trademark Office has issued 2,645 patents for isolated DNA over the past 30 years.

The case is Association for Molecular Pathology v. Myriad Genetics, 11-725.

Egis Added as Defendant in AstraZeneca-Watson Laboratories Case

Egis Gyogyszergyar Nyrt (EGIS), the Hungarian drugmaker owned by Laboratoires Servier, was added as a defendant in a 2010 U.S. patent litigation case between plaintiff AstraZeneca Plc (AZN) and defendant Watson Laboratories Inc.

The case involved AstraZeneca’s patented technology for its cholesterol-lowering drug Crestor. In dispute is AstraZeneca’s patent RE37,314.

“Egis will vigorously defend the claims against it and further informs its business partners that the complaint does not seek a monetary damage award against Egis,” the Budapest- based company said in a statement to the Budapest bourse.

The case is AstraZeneca UK Ltd. v. Watson Pharmaceuticals Inc. (WPI:US), 1:10-cv-00915-LPS, U.S. District Court, District of Delaware (Wilmington).

3M Wins Right to Challenge Avery Dennison Road Sign Patents

3M Co. (MMM:US)’s patent suit against Avery Dennison Corp. was improperly dismissed, a federal appeals court said yesterday.

The suit was part of a series of patent cases between the two companies related to reflecting sheeting for road signs. St. Paul, Minnesota-based 3M filed the suit in federal court in September 2010, seeking a declaration it didn’t infringe some of Avery Dennison’s patents.

The Washington-based U.S. Court of Appeals for the Federal Circuit, which hears appeals of patent cases, said the trial judge erred by dismissing the suit.

The appeals court said trial judge erred by saying the controversy between the two companies hadn’t yet reached the point at which litigation was appropriate and by dismissing the case.

According to court papers, a lawyer for Pasadena, California-based Avery told a 3M lawyer in 2009 that 3M’s DiamondGrade DG product line “may infringe” its patents, and that “licenses are available.” 3M filed the suit in response.

Although Avery had argued that discussion alone wasn’t enough to warrant the suit to challenge patents, the appeals court said the trial judge should consider the issue.

John A. Dragseth of Boston’s Fish & Richardson PC (1357L:US) argued the case for 3M. Avery’s case was argued by David L. Bilsker of Los Angeles-based Quinn Emanuel Urquhart & Sullivan LLP (496224L:US).

The lower court case is 3M Co. v. Avery Dennison Corp. (AVY:US) 0:10-cv-03849-MJD-FLN, U.S. District Court, District of Minnesota (Minneapolis). The appeal is 3M Co. v. Avery Dennis Corp, 11-01339, U.S. Court Of Appeals for the Federal Circuit (Washington).

For more patent news, click here.


Tougher China Trademark Laws Might Have Hurt Apple’s IPad Fight

China is proposing improvements to its 30-year-old trademark law that help household names from abroad better protect their rights. Apple Inc. (AAPL:US), in its dispute over the iPad name, might be better off without the reforms.

Government proposals for tackling “the rampant problem of trademark squatting” include doubling the maximum damages for infringers to 1 million yuan ($158,539). Since a court already ruled that Apple doesn’t own the iPad name in China, the company would be on the wrong side of the sanctions, said Caroline Berube, an intellectual property lawyer in the southern Chinese city of Guangzhou.

The Apple case “is another example of why multinationals need to do their diligence and tread cautiously in China as domestic companies have become much more savvy about protecting and exploiting IP rights,” Steve Rizzi, the former head of the China practice for Milwaukee-based Foley & Lardner LLP (1125L:US), said in an e-mail.

Apple’s appeal that it, and not Hong Kong-listed display maker Proview International Holdings Ltd. (334), owns the iPad name in China will hinge on contract law rather than trademark law, the lawyers said. A decision from a Guangzhou court is due by the end of May, and the new trademark law won’t be voted on until next year’s national legislature at the earliest, said Berube, of HJM Asia Law & Co.

Apple, which won a lawsuit against Shenzhen-based New Apple Concept Daily Technology Co. in 2008 for using an apple in its logo, started its legal battle with Proview in 2010, the same year it introduced the iPad tablet. A court in Shenzhen, across the border from Hong Kong, ruled against Apple last year, saying the purchase agreement for the trademarks featured the wrong Proview unit.

“As a company that generates a lot of intellectual property we would never knowingly abuse someone else’s trademarks,” Carolyn Wu, Apple’s Beijing-based spokeswoman, said in a statement. She declined to comment on the proposed laws and how they would have affected the iPad case.

The Cupertino, California-based company argued that at least three employees of the Proview unit owning the trademarks had participated in negotiations leading to the sale.

Separately, Apple has sued Proview founder Rowell Yang in Hong Kong for conspiring with his companies to breach the sale agreement. That case is in the pre-trial phase.

For more trademark news, click here.


Pinterest Revises Use Terms, Says It Won’t Sell Users’ Content

Pinterest, the Palo Alto, California-based social media company that provides a venue for users to share information about items of interest, has changed its terms of use to clarify the rights of users to the content they post.

In a March 23 blog posting, Pinterest said its original terms of use agreement allowed the company to sell content posted by users. The company said that “selling content was never our intention and we removed this from our updated terms.”

Pinterest said it has developed “simpler tools” for anyone to report copyright or trademark infringement. And in wake of concerns about pro-anorexia “thinspiration” postings made by some, Pinterest said it won’t allow postings “that explicitly encourage self-harm or self-abuse.”

For copyright news, click here.

IP Moves

Former Righthaven CEO Steven Gibson Moves to Dickinson Wright

Dickinson Wright PLLC (1324L:US) now has former Righthaven LLC chief executive officer listed as a partner, according to the Detroit- based firm’s website.

Steven A. Gibson led Las Vegas-based Righthaven, which was formed to enforce copyrights for newspapers owned by Las Vegas- based Stephens Media Group. Although Righthaven filed about 200 copyright-infringement cases in 2010, courts generally took a dim view, finding that Stephens still retained control over some aspects of the copyright, and therefore that Righthaven lacked standing to sue.

According to his biography listed on the Dickinson Wright website, Gibson has represented media, software-development and gaming/casino companies in intellectual property and technology- related disputes. Before he was with Righthaven, Gibson practiced law in Japan and with Chicago’s Sidley Austin LLP (1119L:US).

Gibson has an undergraduate degree from the University of Louisville and a law degree from Chicago-Kent College of Law.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: Michael Hytha at

Too Cool for Crisis Management

Companies Mentioned

  • ILMN
    (Illumina Inc)
    • $189.12 USD
    • 3.28
    • 1.73%
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