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Roche Claims Victory as Court Rejects Promega s PCR Claims, but Taq IP Still Unenforceable

This article has been updated from a previous version to include Promega's comments on the ruling.

NEW YORK, May 18 (GenomeWeb News) - In the latest chapter of a patent dispute that began in 1992, Roche Diagnostics has claimed a "substantial legal victory" following a California US District Court ruling that blocked Promega's effort to overturn several patents in Roche's PCR intellectual property portfolio.

The court yesterday rejected Promega's claim that two of Roche's "foundational" PCR process patents (US Patent Nos. 4,683,195 and 4,683,202) were unenforceable. Another Roche patent (US Patent No. 4,889,818), which covers the thermostable DNA polymerase enzyme from Thermus aquaticus, or "Taq," is still considered unenforceable, however, due to a previous finding of "inequitable conduct" -- or misrepresentations to the patent office -- on the part of Roche in obtaining the '818 patent. Roche said it plans to appeal this determination, which was overturned by the appellate court in a previous round of the litigation battle.

Lanny Davis, outside counsel to Roche, said in a statement that "no misrepresentations were made about the molecular weight of Taq, its distinguishing feature over the prior art. We believe that, after balancing the equities, the appellate court will affirm the Taq patent's enforceability."

Davis, from the firm of Orrick, Herrington & Sutcliffe, downplayed the significance of the '818 patent. "If the metaphor is an apple, the '195 and the '202 [patents] are the core, and the Taq microbe, while significant, has alternatives -- It's not even on the apple," he told GenomeWeb News today.   

Davisadded that Roche is also claiming a second, "more important" victory than the court's decision to reject Promega's effort to overturn the core PCR technology patents. The California court's ruling will also enable Roche to proceed with a lawsuit against Promega alleging that Promega tried to induce its customers to break their Roche PCR licenses and buy from Promega, he said.

"Promega asked the court to block our ability to go forward to obtain substantial monetary damages in the millions of dollars from Promega for this alleged theft of our intellectual property and the inducement of our customers to break their contracts," Davis said. "The judge yesterday rejected Promega's effort to block our going forward in that lawsuit, so starting today we are going to vigorously prosecute our claims against Promega for interfering with our customer relationships."

Promega, meanwhile, issued a strongly worded statement emphasizing the unenforcability of the '818 patent, and Roche's alleged inequitable conduct. "This decision upholds the integrity of scientific innovation," said Randall Dimond, vice president and chief technical officer of Promega. "Over a decade of legal obstacles couldn't hide the fact that the US Patent Office was deceived by intentional misrepresentation and outright fabrication to gain an economic monopoly. The decision is unequivocal and definitive. It goes beyond simply clearing Promega, as it means that scientists have been burdened with undue royalty costs in the purchase of Taq."

In addition, Promega said that it was invited by the court to submit further evidence on the enforceability of the '195 and '202 PCR patents.

Roche has posted a complete chronology of the patent litigation history on its website.

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