Jury verdict in favor of patentee in Third Wave Technologies Inc. vs. Stratagene

On August 31, 2005, a jury in the United States District Court for the Western District of Wisconsin determined that Third Wave's 6,090,543 and 6,348,314 patents are valid and that certain embodiments of Stratagene's FullVelocity technology infringed those patents. Stratagene was informed on September 2, 2005 that the jury decided to award Third Wave a total of $5.29 million in damages.

US 6,090,543, issued July 18, 2000, has been cited by nine (9) US patents. The '543 is based on a Continuation-In-Part of co-pending application Ser. No. 08/756,386, filed Nov. 26, 1996 which is a Continuation-In-Part of co-pending application Ser. No. 08/682,853, filed Jul. 12, 1996, which is a Continuation-In-Part of co-pending application Ser. No. 08/599,491, filed on Jan. 24, 1996 and a Divisional of co-pending application Ser. No. 08/758,314, filed Dec. 2, 1996.

Separately, the '543 was made with government support under Cooperative Agreement 70NANB5H1030 awarded by the Department of Commerce, National Institute of Standards and Technology, Advanced Technology Program and Grant No. DE-FG02-94ER81891 awarded by the Department of Energy.

The first claim of the '543:

A method of detecting the presence of a target nucleic acid molecule by detecting non-target cleavage products comprising:

a) providing:

i) a cleavage means,

ii) a source of target nucleic acid, said target nucleic acid having a first region, a second region, a third region and a fourth region, wherein said first region is located downstream from said second region, said second region is contiguous to and downstream from said third region and said third region is located adjacent to and downstream from said fourth region;

iii) a first oligonucleotide complementary to said fourth region of said target nucleic acid;

iv) second and third oligonucleotides having 3' and 5' portions, wherein said 3' portion of said second oligonucleotide contains a sequence complementary to said third region of said target nucleic acid and wherein said 5' portion of said second oligonucleotide and said 3' portion of said third oligonucleotide each contain sequence fully complementary to said second region of said target nucleic acid, and wherein said 5' portion of said third oligonucleotide contains sequence complementary to said first region of said target nucleic acid;

b) mixing said cleavage means, said target nucleic acid, said first oligonucleotide, said second oligonucleotide and said third oligonucleotide to create a reaction mixture under reaction conditions such that said first oligonucleotide is annealed to said fourth region of said target nucleic acid and wherein at least said 3' portion of said second oligonucleotide is annealed to said target nucleic acid and wherein at least said 5' portion of said third oligonucleotide is annealed to said target nucleic acid so as to create a cleavage structure and wherein cleavage of said cleavage structure occurs to generate non-target cleavage products, each non-target cleavage product having a 3'-hydroxyl group; and

c) detecting said non-target cleavage products.

The inventors of the '543 are: Prudent; James R. (Madison, WI); Hall; Jeff G. (Madison, WI); Lyamichev; Victor I. (Madison, WI); Brow; Mary Ann D. (Madison, WI); Dahlberg; James E. (Madison, WI). The assignee of the '543 is Third Wave Technologies, Inc. (Madison, WI).

James E. Dahlberg is a professor at the University of Wisconsin whose research centers on the mechanisms by which RNAs and proteins are moved between the nucleus and cytoplasm. He has studied control of Ran-GTP dependent transport of RNAs from the nucleus and on mechanisms that are used to monitor RNA integrity during export. The primary experimental systems that have been used are microinjection into X. laevis oocytes, transport in permeabilized tissue culture cells and processing of RNAs in vitro.

The mission of Third Wave may be found at http://www.twt.com/about/corpstrat.htm.

Stratagene is located in San Diego.