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Roche and Promega Settle 13-Year-Old PCR Litigation; Promega to Continue Selling PCR and Taq Products

NEW YORK, Sept. 14 (GenomeWeb News) - Roche and Promega have settled their legal battle over PCR-related technologies in the United States, Europeand Australia, Roche said this week.


"All PCR-related litigation resolved to the satisfaction of both parties," the Swiss drug giant said in a statement posted on its web site.

The specific terms of the parties' agreement are confidential, but Roche said that the amount of the settlement is covered by existing litigation provisions in the Roche financial statements.


Randall Dimond, vice president and chief technical officer at Promega, said the company is "very pleased" with the setlement. He added that Promgea will continue to provide the same poroducts and serviuces it has before Roche's suit was launched.


The settlement puts to rest a legal row that began in 1992 when Roche sued Promega in the US District Court for the Northern District of California, for allegedly violating a license agreement and contributing to infringement of Roche's patents for PCR and Taq enzymes.

According to the court documents, Promega had a license to one patent for the Taq enzyme, which allowed the company to sell Taq reagents for other than PCR applications. Promega had obtained the license to this patent, No. 4,889,818, from Cetus, the original holder of the patents to the Taq enzyme and PCR.


In December 1991, Roche acquired all of Cetus' Taq patents. Roche brought suit against Promega the following year, alleging that Promega's sale of "PCR optimized kits" to researchers violated the license agreement to the '818 patent and contributed to infringement on Roche's patents.

In defending against this claim, Promega argued that the '818 patent was obtained through "inequitable conduct," and was therefore unenforceable, the court documents show. In December 1999, the California US District Court ruled that the patent was unenforceable, holding that the applicants to the '818 patent did commit inequitable conduct based on eight misrepresentations and omissions of information about Taq. (This ruling rendered Roche's claims for infringement or breach of the licensing agreement to the patent moot.) Roche then appealed the District Court's decision on the unenforceability of this patent to the US Court of Appeals for the Federal Circuit.

In March 2003, the Appeals Court issued a ruling that ensured the litigation would continue: While it found the applicants to the '818 patent had committed some of the inequitable conduct, it overturned the lower court's finding as to some of the other inequitable conduct, and returned the case to the California District court for a further determination as to whether the patent is unenforceable based on these findings.

In July, Roche was denied a rehearing by a full panel of the appeal's court's judges, returning the case to the lower court, leaving in limbo the issue about the enforceability of the '818 patent-as well as Roche's underlying claim against Promega.

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