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In Cepheid v. Roche IP Suit, Court Delays Hearing on One Patent, Dismisses Second Patent from Case

NEW YORK (GenomeWeb News) — In an intellectual property lawsuit brought against Roche by Cepheid, a federal court has ordered that a hearing be delayed on whether a PCR patent owned by Roche is invalid and expired until an outcome is achieved in arbitration proceedings between the companies.

The court also has dismissed additional counts by Cepheid against Roche seeking judgment that a second PCR patent owned by Roche is unenforceable, citing a lack of subject matter.

At the heart of the ongoing legal tussle are two patents, US Patent No. 5,804,375, which covers a key element of the real-time PCR process; and US Patent No. 6,127,155, entitled "Stabilized thermostable nucleic acid polymerase compositions containing non-ionic polymeric detergents."

The '375 patent, which also is currently under re-examination at the US Patent and Trademark Office at the behest of a third party, was covered under a license originally granted to Cepheid by Roche in 2004.

In October 2011, Cepheid disclosed in a statement accompanying its third-quarter 2011 financial release that it was terminating the remainder of its PCR license with Roche after determining that any patents remaining under the license were "not pertinent to Cepheid's future business plans."

It was later revealed in court documents that Cepheid informed Roche of this license termination in July 2010, to which Roche responded that the '375 patent remained enforceable until its expiration in 2015, and that Cepheid would be infringing upon the patent by continuing to sell products covered by the patent, which includes its Xpert diagnostic kits.

Cepheid had also alleged that before it decided to terminate its licensing agreement with Roche that Roche had informed Cepheid that the second patent, '155, was also necessary for certain of Cepheid's products.

As reported in February 2012 by GenomeWeb Daily News sister publication PCR Insider, Roche subsequently filed an arbitration hearing against Cepheid with the International Chamber of Commerce in an attempt to resolve the dispute.

And, as reported by PCR Insider in August of last year, Cepheid filed a formal lawsuit in the US District Court for the Northern District of California against Roche seeking to invalidate both the '375 and '155 patents, and seeking judgment that it did not infringe the patents.

Despite the lawsuit, Roche claimed that it expected arbitration hearings regarding the matter to proceed and maintained that its patents remained valid and enforceable. Roche then requested the court to stay hearings on the '375 patent pending the outcome of this arbitration and to dismiss Cepheid's counts regarding the '155 patent, claiming that it was not pertinent to the case.

In the order handed down yesterday, the District Court granted Roche's motions, ordering that the hearing on the '375 patent be delayed until further order by the court.

In addition, the court dismissed Cepheid's claims regarding the '155 patent, noting that "it appears from the facts in this case that the plaintiff [Cepheid] took specific actions to attempt to manufacture a controversy over the '155 patent, possibly to gain leverage in the dispute over the '375 patent."

Arbitration hearings regarding the '375 patent continue, and the court noted that Cepheid and Roche were to update the court within 30 days of the issuance of the arbitration decision.