Federal appeals court overturns $137M patent verdict against Roche — but the case isn't closed just yet
A federal appeals court overturned a $137 million verdict against Roche Diagnostics on Friday in a Delaware patent infringement case — but the pharma giant isn’t completely out of the woods.
While the court ruled that Roche did not induce customers to use its Cobas diagnostics machines in a way that infringed upon three Meso Scale patents, it maintained that Roche directly infringed upon one of its patents, and ordered a new damages trial.
The patents in question surround immunoassays that exploit electrochemiluminescence (ECL), or the use of electrons and light to detect and measure the presence of specific molecules in a sample — for example, virus molecules in a blood sample. Roche’s Cobas machines use ECL for a wide variety of tests.
Meso argues that IGEN International granted it exclusive rights to the patent claims it’s now bringing against Roche over the use of its Cobas tests, according to court documents.
In 1998, Roche acquired Boehringer Mannheim, which had previously licensed ECL rights from IGEN. Roche inherited Boehringer’s rights, and in 2003, Roche and IGEN formed a new agreement that granted Roche nonexclusive rights to the ECL tech in the field of “human patient diagnostics.”
IGEN later transferred its rights to BioVeris, which Roche snapped up in 2007 for about $600 million. At the time, the company announced that it would now own the full patent rights to the ECL tech, and began selling the products outside of its prior field restrictions.
But in 2010, Meso sued Roche, alleging the company breached its 2003 license with IGEN by violating the field restriction.
In 2019, a jury found that Roche induced customers to use the Cobas machines in a way that violated three of Meso’s patents, and directly infringed on one of the patents. The jury awarded Meso $137 million in damages — but Judge Leonard Stark tacked on interest, bringing the amount up to $170 million, according to a Reuters report.
On Friday, a panel of judges ruled that Meso failed to prove that Roche intended for its Cobas users to violate the patent rights, but upheld that Roche directly infringed on one of Meso’s patents.
However, Judge Pauline Newman dissented, arguing that “Roche cannot infringe patents it owns.”
“In 2007, Roche purchased the patents in suit from IGEN International, via IGEN’s patent-holding company BioVeris Corporation. Meso Scale Diagnostics (MSD or Meso) does not own or have exclusive rights to these patents, and has no right to control their use in areas outside of the designated Research Program,” she wrote.
Roche has not responded to a request for comment.