Affymetrix, Inc. v. Illumina, Inc.

Affymetrix is no stranger to patent litigation. The Santa Clara-based biotech company has a reputation for aggressively enforcing its microarray patents, the key IP in its core gene expression business. [Genes that are expressed, or turned on, make certain proteins that can be studied to understand diseases.] As the company's chief IP counsel, Philip McGarrigle, explained to IP Law & Business last year, "We want to make sure we protect our freedom to operate" ["Get It While You Can," June 2003]. So it wasn't surprising that when a smaller biotech company, Illumina, Inc., tried to expand into the gene expression business, the bigger biotech shot back with a lawsuit. Affymetrix "saw us as competition in gene expression and sued us," says Noemi Espinosa, Illumina's vice president of intellectual property. Traditionally, Illumina has concentrated its business on genotyping, finding mutations in DNA to detect diseases.

Affymetrix filed suit in July in U.S. district court in Wilmington, alleging that Illumina infringed six patents, issued between 1996 and 2003, that relate to various aspects of microarray technology. Microarrays are chips of DNA that Affymetrix manufactures that are used to look at gene sequences and measure gene expression. In their countercomplaint Illumina says Affymetrix's patents are overbroad and possibly invalid.

For Illumina [San Diego]

In-house: Noemi ["Nicky"] Espinosa [vice president-intellectual property].

Kirkland & Ellis [Chicago]: Paul Collier, Mark Pals, Marcus Sernel, Terry Tang [San Francisco], and associates Christine Duh [San Francisco], David Olson [San Francisco], and Min Wang [Chicago].

Blank Rome [local counsel, Wilimington]: Richard Hermann.

For Affymetrix [Santa Clara, California]

In-house: Andrea Gross [litigation attorney], Michael Malecek [chief advocacy counsel], Daniel Reed [litigation attorney], and George Yu [litigation attorney].

Morris, Nichols, Arsht & Tunnell [local counsel, Wilmington]: Jack Blumenfeld, Maryellen Noreika, and associate James Parrett.

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