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$137.3M Verdict Against Roche in Patent Lawsuit Overturned

NEW YORK – A $137.3 million verdict in a patent lawsuit against Roche was overturned on Friday and a new damages trial was ordered by the US Court of Appeals for the Federal Circuit. 

The lawsuit, originally filed by Rockville, Maryland-based Meso Scale Diagnostics in 2017, claimed that Roche's Cobas instruments violated licensing rights by directly infringing on one patent held by Meso Scale while also inducing infringement of three other patent claims. A federal jury awarded Meso Scale $137.3 million in damages in 2019 after finding Roche had willfully infringed several claims on the patents, which dealt with electrochemiluminescence-based diagnostic detection technology. The award then increased to $170 million, after the judge added interest.

A split panel from the US Court of Appeals on Friday vacated the award, however, and ordered a new damages trial, saying that Roche directly infringed one patent, but that Roche did not induce any infringement. Meso Scale was unable to show that Roche intended for its customers to use the instruments in a way that violated Meso Scale's rights in the patented testing methods, Circuit Court Judge Sharon Prost said. However, the court also rejected Roche's argument that Meso Scale's license didn't include the right to sue. 

Circuit Judge Pauline Newman dissented, saying she would have thrown out the entire verdict and that Roche "cannot infringe patents it owns."

US patent numbers 6,165,729; 5,935,779; and 6,808,939 were the subjects of the suit and are currently owned by Roche subsidiary BioVeris. The '729 patent covers electrochemiluminescent reaction utilizing amine-derived reductant, while the '779 patent is for methods for improved particle electrochemiluminescence assay, and the '939 patent is for ECL labels having improved nonspecific binding properties and methods of using and kits containing the same. 

Meso Scale originally licensed the ECL technology from IGEN in 1995 for products and processes under a research program, according to court documents. IGEN then transferred its patents to BioVeris in 2003, and in 2007 Roche acquired BioVeris and its patent estate. 

In 2010, Meso Scale attempted to enforce its exclusive license rights, but a bench trial found that Meso Scale couldn't enforce the limitations in the license between Roche and BioVeris.

Roche sued Meso Scale in 2017 and asked the court to declare that its Cobas instruments didn't violate Meso Scale's rights. Meso Scale then countersued Roche for patent infringement of nine patents. 

On deadline, neither company responded to requests for comment.