Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, No. 21-1609 (Fed. Cir. 2022)
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BioVeris, a Roche entity, owns the patents, which concern immunoassays that exploit electrochemiluminescence (ECL). Meso maintains that a prior owner, IGEN, granted it exclusive rights to the patent claims it now asserts against Roche (which sells instruments and reagent packs for performing ECL immunoassays). Meso sued Roche in the Delaware Court of Chancery in 2010, alleging that Roche breached its 2003 license with IGEN by violating a field restriction. The chancery court determined that Meso was not a party to the 2003 license agreement, such that only BioVeris (IGEN’s successor-in-interest) could enforce the field restriction.
In 2017, Roche sought a federal court declaratory judgment that it does not infringe Meso’s rights arising from a 1995 joint venture license agreement. Meso counterclaimed for patent infringement. A jury found that Meso holds an exclusive license to the asserted patent claims, that Roche directly infringed one claim and induced infringement of three claims in other patents, and that Roche’s infringement was willful. It awarded Meso $137,250,000 in damages. The court granted Roche judgment as a matter of law on willfulness, denied Meso’s motions to enhance damages, and rendered a noninfringement judgment with respect to three additional patents on the ground that Meso waived compulsory infringement counterclaims. The Federal Circuit affirmed on direct infringement, reversed on induced infringement, vacated the damages award, remanded for a new trial on damages, and vacated the judgment of noninfringement with respect to three additional patents.
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