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Roche Told to Pay $137M to Meso Scale for Patent Infringement

NEW YORK – A federal  jury on Monday awarded Meso Scale Diagnostics $137.3 million in damages after finding Roche Diagnostics had willfully infringed several claims on three patents held by the Rockville, Maryland-based developer of assays and instruments. 

The jury verdict is currently under seal, but according to the verdict form filed with the US District Court for the District of Delaware, the jurors found that Roche infringed certain claims pertaining to US patent numbers 6,165,729; 5,935,779; and 6,808,939, all of which covers electrochemiluminescence (ECL), a diagnostics detection technology. The patents are held by BioVeris, an affiliate of Roche. 

The '729 patent covers electrochemiluminescent reaction utilizing amine-derived reductant, while the '779 patent is for methods for improved partical electrochemiluminescence assay. The '939 is for ECL labels having improved non-specific binding properties, methods of using and kits containing the same. 

According to court documents filed in 2017, Meso Scale originally licensed ECL technology from a company called IGEN in 1995. In time, IGEN transferred those ECL patents to BioVeris. In the meantime, in 2007, Roche licensed ECL technology from BioVeris.

In 2010, Meso Scale went to court to enforce its exclusive license rights, but a bench trial determined that Meso Scale could not enforce the limitations in the license between Roche and BioVeris and lost the case. 

In 2017 Roche asked the court to find that it did not infringe any of the patents after Meso Scale continued to warn Roche that its use of the ECL technology "infringes Meso's exclusive license rights under the BioVeris patents" and threatened to sue Roche, according to its complaint .

In its answer to the 2017 complaint, Meso Scale said that despite losing the 2010 bench trial, the court then had "expressly noted that its ruling had no bearing on Meso Scale's ability to bring a patent-infringement lawsuit for Roche Diagnostics' activities."

In its counterclaim in 2017 Meso Scale said that Roche infringed nine patents in total.  

On Monday, according to the the verdict form, the jurors found that that Meso Scale is entitled to a "reasonable royalty" of $137.3 million, which Meso Scale proposed.

In a statement, Roche said it is "disappointed with the recent jury award in the US regarding its ECL detection technology," and will be reviewing the decision and its legal options. "There is no impact on our ability to offer and distribute our Cobas e/Elecsys products to customers, neither in the US nor in ex-US markets."

Meso Scale and its lawyers did not respond to a request for comment.