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Issued: Three Mullis patents, two (195 and 202) issued in July 1987 and the third (the 818 patent) in December 1989 Prosecuted by: Albert Halluin (now a partner in the Menlo Park, Calif., office of Washington, D.C.’s Howrey Simon Arnold & White) Litigated by: Lynn Pasahow (now of Palo Alto, Calif.’s Fenwick & West) Stanford University’s Cohen-Boyer patent on gene-splicing is the Michael Jordan of biotechnology patents. But unlike Mike, who is thinking of coming out of retirement, Cohen-Boyer can’t come back; it expired in December 1997. Cetus Corporation of Emeryville, Calif., hatched a dominant biotech patent perhaps most like Shaq. Cetus scientist Kary Mullis invented a method — known as polymerase chain reaction (PCR) — to take a small DNA section and make copies of it. Without PCR, forensic scientists, drug developers, and researchers would have a much harder time working with DNA. It also would have been impossible to map the human genome. E.I. du Pont de Nemours & Company had challenged the validity of two PCR patents (the 195 and 202 patents) in 1990. Cetus successfully defended those patents in San Francisco federal court.In 1992 Cetus sold the patents to F. Hoffman La-Roche Ltd. for $300 million. Hoffman La-Roche had built a healthy business licensing the technology for $100,000� to $500,000 in upfront fees, and 15 percent running royalties. The litigation is not over. Hoffman-La Roche sued Promega in 1992 for patent infringement in San Francisco federal court. Promega countersued in 1994. The patent in question was Mullis’ 818 patent for the Taq enzyme. Once the original DNA strand is unzipped, Taq helps glue together the multiple copies made of the original. In December 1999 federal judge Vaughn Walker invalidated that patent, finding that Cetus had committed fraud when the company obtained it. That ruling could jeopardize Hoffman La-Roche’s licensing strategy. But the company’s chief patent counsel Victor Lee maintains that the ruling is not devastating because the court invalidated only patent 818. Lee also says that enzymes other than Taq can be used in the PCR reaction. The U.S. Court of Appeals for the Federal Circuit heard the appeal in May. At press time, there was no decision.

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