Affymetrix to Pay Enzo $10M in DNA Detection Patent Settlement

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By John T. Aquino

Oct. 14 — Affymetrix Inc. will pay Enzo Life Sciences $10 million to settle Enzo's litigation in federal district court alleging Affymetrix has infringed a DNA detection patent, according to Enzo's Oct. 13 announcement and its government filings.

Under the settlement, the parties requested dismissal of all of Enzo's claims against Affymetrix involving U.S. Patent No. 7,064,197 (“System, array and non-porous solid support comprising fixed or immobilized nucleic acids”) and Affymetrix's counterclaims for invalidity and unenforceability filed in the U.S. District Court for the District of Delaware.

In its filing with the Securities and Exchange Commission, Enzo indicated that the settlement resulted in releases, licenses and covenants not to sue.

Affymetrix was one of 11 life sciences company defendants Enzo sued separately for infringement of patent composition claims that can be used for diagnostic tools for detecting analytes and as therapeutic agents.

Enzo's Sees Royalty Decline

Neither Enzo, which is based in Farmingdale, N.Y., nor Affymetrix, which is based in Santa Clara, Calif., immediately responded to Bloomberg BNA's e-mail and phone requests for further comment on the settlement.

Also on Oct. 13, Enzo BioChem, Enzo Life Sciences' parent company, reported global revenues for the fiscal year ended July 31 of $97 million, up 2 percent from the previous year, with life sciences' revenues down 4 percent due to a 43 percent decline in third-party royalties and fluctuations in foreign currencies.

And Then There Were Nine

On July 6, Enzo reached a similar $7 million settlement with Luminex Inc. and Abbott Laboratories, whom Enzo had jointly sued in the same federal district court for infringement of the '197 patent. That settlement also dismissed claims against Luminex that it had infringed U.S. Patent Nos. 6,992,180 and 8,097,405.

According to Enzo's press statement, the Affymetrix settlement has no effect on lawsuits pending in the same court against the nine remaining defendants alleged to have infringed one or more of the three patents at issue: Hologic, Abbott, Siemens Healthcare, Agilent Technologies, Illumina, Becton Dickinson, Life Technologies, Gen-Probe and Roche Molecular.

On July 7, the District of Delaware issued a claim construction decision—defining the meaning of terms in a patent claim—that Enzo announced in a press statement was favorable for Enzo's position in these litigations.

In April 2014, Affymetrix agreed to pay Enzo $5 million to settle Enzo's litigation in the U.S. District Court for the Southern District of New York that alleged that Affymetrix's selling of reagent kits for labeling probes on its chips had infringed Enzo's patents.

Enzo was represented by Farnan LLP, Wilmington, Del., and Desmarais LLP, New York. Affymetrix was represented by Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Del., and Kaye Scholer LLP, Palo Alto, Calif.

To contact the reporter on this story: John T. Aquino in Washington at jaquino@bna.com

To contact the editor responsible for this story: Lee Barnes at lbarnes@bna.com