Illumina to Pay Enzo$21M to Settle DNA Test Patent Suit

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By John T. Aquino

July 11 — Illumina Inc. will pay Enzo Life Sciences Inc. $21 million to settle allegations that it infringed a DNA detection patent, Enzo announced July 7 ( Enzo Life Sciences, Inc. v. Illumina, Inc., D. Del., No. 1:12-cv-00435, settlement announced 7/7/16 ).

The settlement is the fifth out of 11 lawsuits that Enzo filed in the U.S. District Court for the District of Delaware alleging infringement of patent composition claims that can be used for diagnostic tools for detecting analytes and as therapeutic agents. The other six lawsuits are still pending and aren't affected by the Illumina settlement, Enzo said in a statement and a filing with the Securities and Exchange Commission.

The deal with Illumina brings to $82 million Enzo's settlement amount in this line of cases. Enzo earlier settled with Life Technologies Corp. (10 LSLR 11, 5/27/16), Agilent Technologies (10 LSLR 01, 1/8/16), Luminex Inc. and Abbott Laboratories (9 LSLR 776, 7/10/15) and Affymetrix (9 LSLR 1141, 10/16/15).

On Oct. 13, 2015, Enzo BioChem, Enzo Life Sciences' parent company, reported global revenues for the fiscal year that ended July 31 of $97 million, up 2 percent from the previous year, with life sciences' revenues down 4 percent due in part to a 43 percent decline in third-party royalties.

In response to the parties' stipulation of dismissal, the court ordered the case dismissed on July 8.

Then There Were Six

In its April 6, 2012, complaint, Enzo alleged that Illumina's BeadArray and BeadChip technology and its DNA sequencing products had infringed Enzo's U.S. Patent No. 7,064,197 (“System, Array and Non-Porous Solid Support Comprising Fixed or Immobilized Nucleic Acids”).

Other defendants were alleged to have infringed the ‘197 patent and/or U.S. Patent No. 6,992,180 (“Oligo- or Polynucleotides Comprising Phosphate Moiety Labeled Nucleotides”) and/or U.S. Patent No. 8,097,405 (“Nucleic acid sequencing processes using non-radioactive detectable modified or labeled nucleotides or nucleotide analogs, and other processes for nucleic acid detection and chromosomal characterization using such non-radioactive detectable modified or labeled nucleotides or nucleotide analogs”).

The remaining defendants from the original 11 are: Abbott, Becton Dickinson, Gen-Probe, Hologic, Roche Molecular and Siemens Healthcare.

Enzo was represented by Farnan LLP, Wilmington, Del., and Desmarais LLP, New York. Illumina was represented by Fish & Richardson P.C., Wilmington, Del. and San Diego.

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

To contact the editor responsible for this story: Randy Kubetin at rkubetin@bna.com

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