A Diagnostics & Imaging Week Staff Report

Roche Molecular Diagnostics (RMS; Pleasanton, California) and Applied Biosystems (Foster City, California), an Applera (Norwalk, Connecticut) company, said they have entered into a settlement agreement resolving their lawsuit pending in the U.S. District Court for the District of Connecticut against MJ Research (Waltham, Massachusetts), a company acquired by Bio-Rad Laboratories (Hercules, California) in 2004.

Bio-Rad will pay Roche Diagnostics and Applera an undisclosed sum to settle the outstanding claims. The court rejected all challenges to the enforceability of Roche's PCR patents and the licensing program.

"We are very pleased with this settlement," said Heiner Dreismann, PhD, CEO of Roche Molecular Systems. "Bio-Rad is an important licensee of our PCR technology and we look forward to continuing our relationship with them."

RMS and Applera originally filed the patent infringement suit in June 1998 against MJ Research relating to certain apparatus and polymerase chain reaction (PCR) technology. A jury decided in favor of Roche and Applera in April 2004.

Then in April of last year, the court granted Roche and Applied Biosystems' motion to enhance damages and award attorney fees. Because MJ Research's patent infringement was found to be willful, the court doubled the damages originally awarded.

The settlement also resolves litigation brought by Bio-Rad against Applera in U.S. District Court for the Northern District of California in 2002 for patent and trademark infringement, and counterclaims by Applera against Bio-Rad. With the settlement, Applera has entered into a license agreement with Bio-Rad relating to Applera's capillary electrophoresis business.

Paul Grossman, PhD, vice president, strategic planning, business development and intellectual property at Applied Biosystems, said, "Numerous other companies have licensed our patents relating to PCR technology and we're looking forward to continuing our relationship with Bio-Rad as a licensee of our PCR patent portfolio."

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