MIT, E8 Pharmaceuticals Sue Second California Firm over Genotyping Patent

Xconomy Boston — 

The stellar plaintiffs in a patent lawsuit over genotyping technology developed at MIT are raising the stakes by dragging a second California company into the dispute.

In 2008, MIT and E8 Pharmaceuticals, a Cambridge, MA-based startup created by MIT biologist David Housman and Harvard biologist Richard Mulligan, sued Santa Clara, CA-based Affymetrix for allegedly including technology in its GeneChip microarray products that infringes on an MIT DNA-screening technology exclusively licensed to E8. That suit has been dragging on for the last 10 months, but now MIT and E8 are going after an Affymetrix partner, a Foster City, CA-based genetic testing company called Navigenics.

In a lawsuit filed Tuesday in the District Court of Massachusetts, the two plaintiffs say Navigenics is infringing on the same MIT patent by using Affymetrix-manufactured microarrays as part of its genetic testing services.

Mass High Tech broke the story on Wednesday. The MHT story pegged the demand for damages at $75 million. But court documents examined by Xconomy don’t specify an exact damage amount, and say only that the amount of the damages requested is greater than $75,000.

It’s the latest development in a fractious story. As Bob explained in an extensive article last July, Housman is one of the named inventors on an MIT-owned U.S. patent, No. 6,703,228, which covers methods for high-throughput genotyping using single-nucleotide polymorphisms (SNPs). The patent was filed in 1999 and granted in March 2004, but Affymetrix claimed in September 2004 that it had actually filed a patent application on substantially the same invention in 1994. In 2007, the U.S. Patent and Trademark office eventually ruled that priority belonged to the MIT group. In its suit last year, E8 and MIT claimed that by continuing to sell its GeneChip equipment, which allegedly uses the same SNP genotyping technology, Affymetrix was infringing on the MIT patent.

Now, in the complaint filed this week, MIT and E8 say that Navigenics is also infringing the patent “by providing, selling and offering to sell, on a nationwide basis, genetic counseling services that use certain GeneChip products manufactured by Affymetrix.” The nub of the MIT-E8 complaint appears to be the fact that in February, Navigenics purchased an Affymetrix facility in West Sacramento, CA, where Affymetrix formerly performed microarray-based clinical testing services. “As part of its purchase of the CLIA facility, Navigenics has taken over infringing activities that were previously performed by Affymetrix and has continued to provide, sell and offer to sell services that directly infringe the ‘228 patent,” the complaint says.

The complaint asks the Massachusetts court to force Navigenics to pay damages and legal fees to MIT and E8. If Navigenics doesn’t ultimately take a license to the MIT patent, the plaintiffs say the court should either force Navigenics to pay royalties, or issue an injunction to keep the company from using the Affymetrix technology.

The legal team representing MIT and E8 includes Wiley Rein—the Washington, DC-based firm that helped NTP Win a $612 million settlement with Blackberry maker RIM in 2006—and Duane Morris of Boston. Navigenics has until June 8 to respond to the complaint; no hearings or other deadlines have been scheduled in the case. Representatives of E8 and Navigenics were not immediately available to comment on the suit.