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Abbott Sues Qiagen Over Pact for PCR-Based HPV Detection Methods


This story was originally published on Feb. 9.

Abbott Laboratories last week sued Qiagen in a US court in a dispute over a licensing agreement related to patents covering PCR-based detection of human papillomavirus genotypes.

The suit, filed on Feb. 3 in the US District Court for the Northern District of Illinois Eastern Division, seeks to compel Qiagen to arbitrate a dispute related to a licensing deal signed in 1995 between Abbott and a firm called Viropath.

The agreement granted Abbott and its affiliates, including Abbott Germany, freedom to make and sell products relating to subject matter claimed in US Patent No. 5,364,758, entitled "Primers and process for detecting human papillomavirus genotypes by PCR."

The agreement also compelled Abbott to pay various royalties on product sales related to the patent's subject matter, and included a provision outlining mandatory alternative dispute resolution in the case that a dispute should arise regarding the licensing agreement.

In late 2003, Viropath notified Abbott that it had assigned the agreement to Digene. In its suit, Abbott claims that it had a "mutually beneficial and professional relationship" with Viropath and Digene from 1989 through late 2008.

In 2007, Qiagen acquired Digene; and in 2008 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 delayed Abbott from receiving it until March 2009. Around that time, Qiagen 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 also filed a patent infringement suit in Germany, alleging that Abbott is infringing the German portion of European patent No. 0 746 627 B1, which is an improvement on the US patent and is covered by the licensing agreement, Abbott said.

Abbott also said that Qiagen's complaint in the German lawsuit concedes that the entire case is based on the idea that the agreement between the companies was terminated in the US. Therefore, Abbott said, if the termination of the agreement were deemed improper, then Abbott could not be infringing the European patent in question.

In November, Abbott invoked the arbitration provision in the original licensing agreement, and reiterated its position that that Qiagen's termination of the agreement was improper and that by initiating the German action it had breached the arbitration provision. 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, according to the suit.

Abbott has asked the court to declare that the dispute is subject to arbitration and to "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 have declined to comment on the litigation.

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