Issue date: 21 November 2017
Powell Gilbert successfully represent Illumina against Premaitha and Ariosa in patent battle over prenatal testing
LONDON – Leading specialist IP law firm Powell Gilbert LLP has successfully represented Illumina, Inc, the world leader in genome sequencing technology, in a patent battle over non-invasive prenatal tests for foetal sex, Down’s syndrome and other genetic conditions. Powell Gilbert partners Tim Powell and Bethan Hopewell led proceedings on behalf of Illumina, Inc.
The UK High Court judgment handed down in this complex dispute found that all five of the patents in dispute were, after amendment, valid and infringed by Premaitha Health plc, et al. and Ariosa Diagnostics, Inc., et al. The case centred on a series of patents filed between 1997 and 2007 which were licensed to Illumina.
Powell Gilbert had filed patent infringement suits on behalf of Illumina against both Premaitha and Ariosa. With this ruling, Powell Gilbert has successfully secured the UK patent rights for the innovative technologies which enable non-invasive prenatal testing, and the firm will continue work with Illumina in coordinating multinational litigation under Illumina’s patent rights.
Tim Powell, partner at Powell Gilbert LLP, commented:
“It is rare to have the opportunity to work on inventions which can truly be described as revolutionary and have changed the direction of a whole field of medicine. It is always satisfying to see the courts recognise such innovation, and we are very pleased with today’s result for our client, Illumina, Inc.”
Tim Powell and Bethan Hopewell led the team at Powell Gilbert LLP which successfully represented Illumina and the patent proprietors. Premaitha were represented by Allen & Overy LLP, and Ariosa and their affiliated parties were represented by Herbert Smith Freehills LLP.
Please find the judgement here.
Notes to Editors
Powell Gilbert LLP (www.powellgilbert.com) is one of the UK’s leading law firms specialising in intellectual property (IP) litigation, including patents, trademarks, design rights, copyright and confidential information. It advises a wide variety of household brands on major UK and international IP-related issues across a range of sectors including FMCG, mobile and telecommunication as well as in pharmaceuticals, medical devices and biotechnology.
Background on the case
In 1996 Dr Dennis Lo, working at the University of Oxford, showed that during pregnancy small quantities of DNA from the foetus are present in the mother’s bloodstream and could be detected. This opened up a new field of genetic testing of maternal blood samples to diagnose foetal genetic abnormalities.
Almost ten years later in 2006, two rival research groups, one led by Professor Stephen Quake at Stanford University, and the other led by now-Professor Lo at the Chinese University of Hong Kong, used the new technology of massively parallel genomic sequencing, to count the numbers of foetal genome fragments in maternal blood to an extraordinary degree of accuracy, enabling the detection of the minute imbalances in gene copy number caused by the presence of an extra chromosome in conditions such as Down’s syndrome. This brought to fruition the long-held aim of accurate prenatal tests without the need for invasive procedures. Both Professor Lo and Professor Quake patented their inventions, and the patents were eventually licensed to Illumina, Inc.
San Diego-based Illumina is a world leader in the field of DNA sequencing and array-based technologies. Illumina acquired licences for the Lo and Quake patents in order to combine the technology with their powerful genome sequencers to develop fast and accurate prenatal diagnosis tests for foetal sex and genetic disorders.
Premaitha Health Plc and Ariosa Diagnostics, Inc are two companies involved in the development of prenatal tests, both of whom decided to develop and market their own prenatal tests. Illumina commenced litigation, contending that Premaitha’s IONA test infringed both the Lo and Quake patent families, and that Ariosa’s Harmony test infringed Professor Lo’s original 1997 patent. Premaitha and Ariosa responded that all the patents were invalid and requested that the court revoke them.