United States District Court, S.D. California
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA; and BECTON, DICKINSON and COMPANY, Plaintiffs,
AFFYMETRIX, INC.; and LIFE TECHNOLOGIES CORP., Defendants.
ORDER DENYING WITHOUT PREJUDICE PLAINTIFF'S
MOTION FOR A PRELIMINARY INJUNCTION [Doc. No. 8.]
MARILYN L HUFF, DISTRICT JUDGE UNITED STATES DISTRICT COURT
12, 2017, Plaintiff Becton, Dickinson and Company filed a
motion for a preliminary injunction. (Doc. No. 8.) On
September 27, 2017, Defendants Affymetrix, Inc. and Life
Technologies Corp. filed an opposition to Plaintiff's
motion for a preliminary injunction. (Doc. No. 50.) On
October 25, 2017, Plaintiff filed a reply. (Doc. No. 60.) The
Court held a hearing on the matter on November 20, 2017.
Donald R. Ware, Barbara Fiacco, and Jesse Hindman appeared
for Plaintiffs. Douglas E. Lumish, Roger J. Chin, and Brent
T. Watson appeared for Defendants. For the reasons below, the
Court denies Plaintiff's motion for a preliminary
injunction without prejudice.
10, 2017, Plaintiffs the Regents of the University of
California and Becton, Dickinson filed a complaint for patent
infringement against Defendants, alleging infringement of
U.S. Patent No. 9, 085, 799, U.S. Patent No. 8, 110, 673, and
U.S. Patent No. 8, 835, 113. (Doc. No. 1, Compl.)
Specifically, Plaintiffs allege that Defendants are directly
and indirectly infringing the patents-in-suit by
manufacturing and selling products that incorporate polymer
tandem dyes Super Bright 600, Super Bright 645, and Super
Bright 702 (“the accused products”).
(Id. ¶¶ 29-61.) By the present motion,
Plaintiff Becton Dickinson moves for a preliminary injunction
enjoining “Defendants, until further order of this
Court, from (1) selling or offering to sell in the United
States any products containing the polymer tandem dyes they
currently market as ‘Super Bright 600, '
‘Super Bright 645, ' ‘Super Bright 702, '
or any other polymer tandem dyes that contributorily infringe
claims 1 or 3 of the '799 Patent; or (2) taking any other
actions with respect to such dyes that induce others to
practice claims 1 or 3 of the '799 Patent.” (Doc.
No. 8 at 2.)
Plaintiffs allege infringement of three patents in the
complaint, Plaintiff Becton Dickinson's motion for a
preliminary injunction focuses on claims 1 and 3 of the
'799 patent. The '799 patent is entitled
“Methods and compositions for detection and analysis of
polynucleotides using light harvesting
multichromophores.” U.S. Patent No. 9, 085, 799 (filed
Jul. 21, 2015), at (54). The invention disclosed in the
'799 patent relates to “methods, articles and
compositions for the detection and analysis of
polynucleotides in a sample.” Id. at 1:28-30.
specification of the '799 patent explains: “Methods
permitting DNA sequence detection in real time and with high
sensitivity are of great scientific and economic interest.
Their applications include medical diagnostics,
identification of genetic mutations, gene delivery monitoring
and specific genomic techniques.” Id. at
1:34-38 (footnotes omitted). The specification further
explains that at the time of the invention, there was a need
in the art for methods of detecting and analyzing particular
polynucleotides in a sample, and that such methods are
provided in the '799 patent. Id. at 1:49-58.
specification of the '799 patent describes the method as
The method of the invention comprises contacting a sample
with an aqueous solution comprising at least two components;
(a) a light harvesting, polycationic, luminescent
multichromophore system such as, for example, a conjugated
polymer, semiconductor quantum dot or dendritic structure
that is water soluble, and (b) a sensor polynucleotide
conjugated to a luminescent signaling chromophore (referred
to as “Oligo-C*”).
Id. at 3:18-25. Claims 1 and 3 of the '799
patent claim: 1. A method comprising:
contacting a sample with a light harvesting multichromophore
system, the system comprising:
i) a signaling chromophore; and
ii) a water-soluble conjugated polymer comprising a
delocalized electronic structure, wherein the polymer can
transfer energy from its excited state to the signaling
chromophore to provide a greater than 4 fold increase in
fluorescence emission from the signaling chromophore than can
be achieved by direct excitation of the signaling chromophore
in the absence of the polymer;
(b) applying a light source to the sample; and
(c) detecting whether light is emitted from the signaling