Scripps’s Suit Over Illumina Bead Technology Goes Forward

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By John T. Aquino

The Scripps Research Institute convinced a federal district court April 14 to let it proceed with its patent infringement suit against Illumina the second time around ( Scripps Research Int’l v. Illumina, Inc. , S.D. Cal., No. 16-cv-666, motion to dismiss denied 4/14/17 ).

The U.S. District Court for the Southern District of California dismissed in November Scripps’s lawsuit that Illumina’s DNA microarray product infringed Scripps’s patent but allowed the company to amend its complaint ( 10 LSLR, 11/25/16 ). Illumina, based in San Diego, moved to dismiss the amended complaint, but the court found Scripps’s interpretation of the language of its patent’s claims was reasonable enough for the case to go forward.

If the microarray products are found to have infringed the patent, Illumina presumably would be required to pay Scripps royalties that could amount to millions of dollars a year for past and future years.

Appropriate to Interpret Claim Now

Scripps, which is based in La Jolla, Calif., alleged Illumina’s BeadChip and other microarray products infringed Scripps’s U.S. Patent No. 6,060,596 covering a “bifunctional molecule” used in manufacturing DNA microarrays. DNA microarrays are used in the genetic analysis, cancer characterization and diagnosis of many diseases.In an opinion by Judge Janis L. Sammartino, the court discussed Illumina’s argument that Scripps hadn’t plausibly alleged direct infringement because its amended complaint rested on an implausible interpretation of “parameter a” as used in the patent. Sammartino acknowledged there was merit in Scripps’s argument that it is unusual for a court to determine the definition of terms in a patent claim at the motion-to-dismiss stage but indicated a court may do so under certain circumstances.

“Defendant’s argument is premised on what is perhaps one of the most appropriate exercises of claim construction at the pleading stage: a claim of lexicography; that is, that the ‘596 patent itself allegedly provides an explicit definition of parameter ‘a.’ If true, the patent’s definition would control, Plaintiff’s infringement theory based on another construction would be erroneous, and reliance on extrinsic evidence would be inappropriate,” Sammartino wrote.

Scripps Describes Infringement

The court found there was merit to both parties’ arguments about the definition of “parameter a,” and so it couldn’t say at this stage that Illumina’s argument there was an explicit definition of “parameter a” in the claims was correct as a matter of law.

In addition, the court noted that Scripps’s amended complaint set forth how Illumina’s products allegedly infringed each element of the asserted claims, which wasn’t the case with the original complaint.

Accordingly, the court found Scripps’s definition of “parameter a” was, at the pleading stage, a plausible construction based on the intrinsic evidence and the argument that had been presented so far. “Both parties will, of course, have another opportunity to contest the meaning of parameter “a"—if they so desire—at the claim construction phase,” the court wrote.Scripps was represented by Thompson & Knight LLP, Dallas, and Nix Patterson & Roach, LLP, Dallas, and Illumina by Fish & Richardson, San Diego.

To contact the reporter on this story: John T. Aquino in Washington at

To contact the editor responsible for this story: Randy Kubetin at

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