A Diagnostics & Imaging Week
Escalon Medical (Wayne, Pennsylvania) reported an agreement with IntraLase (Irvine, California) settling all outstanding litigation between them.
IntraLase will pay Escalon $9.6 million, with all pending litigation between them dismissed. The payment satisfies all outstanding past, current and future royalties owed or alleged to be owed by IntraLase to Escalon.
The companies will exchange general releases, and full ownership of all patents, and intellectual property formerly licensed to IntraLase from Escalon will be obtained by IntraLase, and all obligations under the parties’ license agreement will terminate. Escalon said it licensed its intellectual laser properties to IntraLase in 1997 in exchange for an equity interest in IntraLase as well as royalties on future product sales.
In April 2005, Escalon, which had been a holder of the common stock of IntraLase, demanded to inspect certain IntraLase’s records, suspecting the withholding of royalties. IntraLase rejected the demand, Escalon said.
“We believe the $9.6 million payment will enhance our ability to strategically expand our businesses and also provide the means to selectively pursue opportunities for synergistic growth,” said Richard DePiano, CEO and chairman of Escalon. The company said the entire $9.6 million will be recorded as a gain on sale in the current period.
The settlement also marks the end of any future royalty payments to be received under the license agreement, expected to have a material effect on earnings in subsequent periods, partially offset by the elimination of legal fees related to this matter.
“With this settlement our disputes with Escalon are completely resolved,” said Robert Palmisano, president/CEO of IntraLase, adding that “sole ownership of the Escalon patents will further strengthen our already robust intellectual property portfolio.”
Escalon develops ophthalmic diagnostic, surgical and pharmaceutical products as well as vascular access devices.
IntraLase manufactures lasers, related software and disposable devices used to create a corneal flap, the first step in LASIK surgery. Its lasers also are used for surgeries treating diseased corneas.
In other legalities:
• Third Wave Technologies (Madison, Wisconsin) reported that it has filed its response to the recent patent lawsuit brought against it by Digene (Gaithersburg, Maryland) in January.
The company’s answer to the suit was filed with the U.S. District Court for the Western District of Wisconsin in Madison, where it is being heard.
Third Wave’s response includes counterclaims against Digene, alleging that it “has abused its monopoly power to thwart competition in the human papilloma virus diagnostic marketplace.”
“Digene filed its patent infringement suit knowing that Third Wave’s Invader chemistry is superior to Digene’s and does not infringe its patent, as our response asserts,” said Kevin Conroy, president/CEO of Third Wave. “While Third Wave prefers competing in the marketplace, we have made a careful decision to file this counterclaim to end the anti-competitive conduct of Digene detailed in our response. We expect to prevail at trial.”
A scheduling conference will be held March 15; an early 2008 trial date is expected.
Third Wave develops molecular diagnostic reagents for DNA and RNA analysis applications to meet the needs of our customers.
• Home Diagnostics (Fort Lauderdale, Florida), a manufacturer of diabetes testing supplies, reported that on March 2, the U.S. District Court, Southern District of Indiana, Indianapolis Division, ruled in its favor concerning non-infringement, and it denied the motion by Roche Diagnostics, Roche Diagnostics Operations and Corange International for a summary judgment in the patent infringement lawsuit concerning the TrueTrack Smart System and TrackEASE Smart System.
Roche alleged that the TrueTrack and TrackEASE blood glucose monitors infringe on U.S. Patent No. 5,366,609, relating to a biosensing blood glucose monitor with a pluggable memory module.
Home Diagnostics manufactures testing supplies.