A Diagnostics & Imaging Week
Diagnostics manufacturers Inverness Medical Innovations (Waltham, Massachusetts) and Quidel (San Diego) reported entering into an agreement terminating all domestic and international intellectual property litigation between them.
The settlement provides for a license to Quidel of all current and future patents of Inverness and its affiliates that embody lateral flow technology for all diagnostic products other than for cardiology testing and for consumer/over-the-counter women's health (except that diagnostics for women's infectious diseases are within the licensed field of use).
Quidel and its affiliates are cross-licensing their current and future patents that embody lateral flow technology to Inverness and its affiliates for all applications.
Inverness will receive a net payment of $17 million and net future royalties from Quidel at 8.5% of revenues from products using the licensed patents.
Inverness develops diagnostic devices and said it is exploring new opportunities for its proprietary electrochemical and other technologies in various applications.
Quidel develops rapid diagnostic solutions at the point of care in infectious diseases and reproductive health.
Competitive Technologies (CTT; Fairfield, Connecticut) reported that a homocysteine assay license has been granted to Axis-Shield (Dundee, Scotland) under CTT's U.S. patent No. 4,940,658 relating to homocysteine medical tests, and said it will pay royalties on U.S. sales of Axis-Shield homocysteine assays.
The agreement, which includes payment for past homocysteine tests sold by Axis-Shield and its client, Bio-Rad Laboratories (Hercules, California), and an up-front license fee, settles patent infringement actions brought by CTT against Axis-Shield and Bio-Rad.
Axis-Shield's homocysteine assay customers, other than those with unsettled litigation matters, will be covered by the Axis-Shield license from CTT. The suits filed by CTT in U.S. District Court against Axis-Shield and Bio-Rad for patent infringement, as well as Axis-Shield's countersuit, will be dropped.
The settlement and license does not relieve Axis-Shield customers of royalties on past or future assays for methylmalonic acid, for which CTT will separately require a license to perform such assays.
CTT has signed license agreements with and is collecting royalties from companies performing the majority of homocysteine assays in the marketplace. These companies now include Axis-Shield, Bayer, Abbott, Roche, Quest and Diagnostic Products.
The homocysteine assay patent is derived from discoveries made by CTT's clients, Drs. Robert Allen and Sally Stabler from the University of Colorado Health Sciences Center (Denver) and the late Dr. John Lindenbaum from Columbia University (New York).
Axis-Shield is an international in vitro diagnostics company.
CTT identifies and commercializes technologies in life, digital, nano and physical sciences developed by universities, companies, independent research institutions and individual inventors.
In other legalities:
iCAD (Nashua, New Hampshire) reported that it has received a letter from R2 Technology (Sunnyvale, California), the company's principal competitor, advising it of R2's position that iCAD's Second Look products allegedly infringed on U.S. patents 6,266,435, 6,477,262 and 6,574,357, licensed to R2.
The cited patents are continuations from the patents already licensed to iCAD by R2 under a September 2003 settlement that resolved previous patent litigation bet-ween the companies.
iCAD said that R2 has not given it enough information "to evaluate R2's position."
It added that under the prior settlement, R2's rights to assert subsequent claims of infringement against it "are limited and require reasonably detailed notice, the opportunity for negotiation and binding arbitration as a required alternative to litigation."
W. Scott Parr, iCAD's president and CEO, said the company has received no valid claim from R2 and that the company's patent position "is very strong, and has been enhanced dramatically by our acquisition of Qualia Computing and CADx Medical Systems [Beavercreek, Ohio] in December of 2003. Should R2 formally assert a claim of patent infringement and demand arbitration, iCAD may in turn assert broad patent infringement claims against R2."
iCAD is a provider of computer-aided detection solutions enabling the identification of cancer and other life-threatening conditions earlier.