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Abbott Files US Suit Against Qiagen Over HPV IP Dispute

NEW YORK (GenomeWeb News) – Abbott this week filed a lawsuit in a US court against Qiagen in a dispute over a licensing agreement covering human papillomavirus intellectual property.

The suit, filed in the US District Court for the Northern District of Illinois Eastern Division, seeks to have the court compel Qiagen to arbitrate a dispute related to a licensing deal that was signed between Abbott and a firm called Viropath, which subsequently assigned rights to the HPV-related patent to Digene. According to Abbott, it had a "mutually beneficial and professional relationship" with Viropath and Digene from 1989 through late 2008.

The patent is US No. 5,364,758 and is titled, "Primers and process for detecting human papillomavirus genotypes by PCR."

Following Qiagen's acquisition of Digene, Qiagen allegedly sent Abbott a letter saying that it was in breach of contract for failing to pay required royalties. Abbott also claims in the suit that Qiagen sent the letter to the wrong address, which led to a delay in Abbott receiving it. Qiagen then allegedly sent a second letter providing notice of termination of the deal.

In response, Abbott informed Qiagen that it was not in breach of contract because it had not sold any licensed products, as defined by terms of the agreement. It asked Qiagen to withdraw the termination notice, but Qiagen refused and reiterated its claims of default, according to Abbott.

This past November, Qiagen filed a patent infringement suit in Germany, alleging that Abbott is infringing the German portion of the European patent, No. 0 746 627 B1, which is an improvement on the US patent and is covered by the licensing agreement, according to Abbott.

In response, Abbott sought arbitration, claiming that Qiagen's termination of the agreement was improper. Qiagen responded by saying that since it had terminated the agreement already, it was no longer bound by the arbitration provisions in the licensing agreement.

Abbott has asked the court to declare that the dispute is subject to arbitration and "order Qiagen to participate in and resolve Abbott's termination claims through the pending arbitration." It also wants the court to declare that the German legal action is subject to arbitration.

In addition, Abbott seeks to have a preliminary injunction put in place to enjoin Qiagen from pursuing further relief in the German case pending resolution of the arbitration. It also seeks an award of the costs associated with the dispute and any other relief that the court deems appropriate.

Qiagen officials declined to comment on the litigation.

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