NEW YORK (GenomeWeb News) — IT-IS International, a privately owned product development company specializing in the life sciences, has filed a pair of lawsuits in Germany against Roche for allegedly infringing intellectual property belonging to IT-IS and breaching a confidentiality disclosure agreement related to quantitative PCR technology.
London-based IT-IS disclosed today that in August it filed the infringement action against Roche in an intellectual property court based in Düsseldorf and the CDA action in a court in Mannheim. In its suits, IT-IS alleges that in 2008 it shared a prototype for a qPCR instrument with Roche under a CDA as part of a tender process. The company said that it also filed for a European patent for the technology.
IT-IS also alleges that in 2010 it was told the tender process and project had been cancelled, and in 2012 Roche commercially launched its own branded product — the LightCycler 96 qPCR instrument. IT-IS said in a statement that it believes this product is "clearly based on unique intellectual property and technology developed by IT-IS and shared with Roche under [the] CDA."
"Roche appears to have applied an 'if you like it, take it' approach to intellectual property in this case," James Howell, co-founder and managing director of IT-IS International said in a statement. "We shared confidential information, based on years of research, in good faith. Yet in our opinion, Roche has decided to take our IP and copy it to launch a product for its own profit."
Notably, IT-IS is already an OEM manufacturer of Roche's LightCycler Nano, and its subsidiary IT-IS Life Sciences has previously licensed technologies to Roche for use in other LightCycler products such as the LightCycler 1536 system.
"This is a fairly long-term relationship which has had a number of wins along the way," Roderic Fuerst, head of business development for IT-IS, told GenomeWeb Daily News. "We are … outraged that despite us being very open … and trusting Roche with a lot of information, in our opinion they breached a contract, and have, beyond that, betrayed our confidence in them."
In an email to GWDN, a Roche spokesperson noted that the company does not comment on pending legal cases as policy. However, the spokesperson confirmed that there is an ongoing legal case between Roche Diagnostics GmbH in Mannheim and IT-IS International. The spokesperson also confirmed that "IT-IS International and Roche had several collaborations … and some of them are still ongoing," and that "IT-IS International is currently manufacturing LightCycler Nano for Roche."
The cases are due to be heard in the Mannheim court in February and in the Düsseldorf court in March, IT-IS said.
IT-IS is asking the courts to issue an injunction on further sales of the LightCycler 96 instrument; an order that Roche implement a global product recall; and damages, IT-IS officials said. Should these judgments be granted, IT-IS is also seeking judgment that Roche sign a license agreement with the company to resume selling the product.
Additional details on the lawsuits can be found in a story published this week in PCR Insider.