Beckman Coulter Inc., the Fullerton-based maker of medical testing and research gear, is hoping a patent lawsuit against a rival is easier to unravel than the human genome.
The company is suing Norwalk, Conn.-based Applera Corp., which undertook a $100 million effort in 2001 to map the body’s genetic makeup.
Beckman’s lawsuit dates back to 2002 and was filed in federal court in Santa Ana. The company charges Applera units with infringing on its patent for a gel used in the process of measuring and mapping out genetic molecules.
“We believe the gel used by Applera was a gel invented by Beckman,” said Andrew Guilford, a trial attorney with the Costa Mesa office of Los Angeles law firm Sheppard, Mullin, Richter & Hampton LLP, who’s representing Beckman. “(Applera) basically copied what we invented.”
Officials from Applera declined to comment for this story.
Beckman hopes to go to trial by the end of the year if a settlement isn’t reached, Guilford said. The litigation now is in discovery, he said.
Applera’s Celera Genomics Group in Rockville, Md., was a key player in mapping the human genome under its former president, J. Craig Venter.
Celera competed with the Human Genome Project, a publicly funded effort, to sequence the human genome a few years back.
Beckman is seeking damages and injunctions against Applera for the alleged patent infringement.
“We would be seeking a lot of damages, and we believe those damages would be good for Beckman since this is our invention,” Guilford said. “The other company, of course, disagrees.”
In court papers, Beckman said that even if damages aren’t awarded, it would settle for “a reasonable royalty for the use of the invention.”
At issue is a pair of patents covering a gel that Guilford said is used in the “fairly complex technological procedure” of trying to determine the structure of DNA at the molecular level.
The gel’s contained within a capillary that molecules are run through, Guilford said. The gel allows a scientist to “sieve” the molecule for mapping purposes, he said.
“Years ago, Beckman patented a gel that allowed for the accurate identification of DNA molecules in this process, and it had the advantage of having a high level of resolution and it also had the advantage of being replaceable in a way that it could be used in an automated system,” Guilford said.
“Lo and behold, another company came along and is alleging that they used that invention themselves to map the human genome, and we’re upset about that,” he said. “The human genome, the DNA, was mapped with a gel that was invented by Beckman.”
Andras Guttman, a scientist and author who used to work for Beckman, invented the gel that the two patents cover. Scientists Robert Pfost and Nebosja Advalovic, who also worked for Beckman, invented a heated cover device that’s also in dispute in the lawsuit.
The financial stakes aren’t huge for Beckman. The gel is part of the company’s smaller biomedical unit, which accounted for 28% of Beckman’s $2.4 billion in 2004 sales. The bulk of Beckman’s revenue comes from machines and fluids used by laboratories running medical tests for doctors.
But Beckman sees potential in the biomedical unit, which supplies gear and fluids to medical, university and other researchers. The unit has slumped in recent years but could see growth along with the biotechnology sector.
The Human Genome Project and the Celera effort could lead to the development of drugs to fight gene-based conditions, and indirectly give a boost to Beckman.
Business concerns, rather than the prestige of being involved with the genome effort, appear to be behind the lawsuits, according to patent lawyers not involved in the suit.
“What drives these kind of lawsuits is actually market share in the research area, as far as the equipment sales go,” said Russell Hill, a partner with Howrey, Simon, Arnold & White LLP’s office in Irvine who’s been involved in litigation involving DNA cases.
Applera’s Applied Biosystems Group makes research gear that competes with Beckman’s.
In taking on Applera, Beckman is dealing with a company that’s had a history of being aggressive in terms of using the courts, said John Kalnay, a patent attorney with McDonald Hopkins Co. in Cleveland.
As for Beckman’s suit against Applera, “The Human Genome Project is just huge,it’s so important to advancing human life,” Kalnay said. “On the business side, there is a lot of money to be made off it.”
