Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC

Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC

Opinion

 [*1112]  Prost, Circuit Judge.

Roche Diagnostics Corporation and BioVeris Corporation (collectively, "Roche") appeal a final judgment from the District of Delaware sustaining the jury's verdict that Roche violated exclusive license rights belonging to Meso Scale Diagnostics, LLC ("Meso") by directly infringing one patent claim and inducing infringement of three other patent claims. We affirm on direct infringement, reverse on induced infringement, [**2]  vacate the damages award, and remand for a new trial on damages.¹ On Meso's cross-appeal, we vacate the district court's judgment of noninfringement with respect to three additional patents and remand.

 [*1113]  Background

The patents-in-suit concern immunoassays that exploit a phenomenon called electrochemiluminescence ("ECL"). Meso doesn't own these patents. Indeed, appellant BioVeris (a Roche entity) does. But Meso maintains that a prior owner, IGEN International, Inc. ("IGEN"), granted it exclusive rights to the patent claims it now asserts against Roche (which sells instruments and reagent packs for performing ECL immunoassays). We briefly recount the parties' relevant licensing and litigation histories below.

Meso was formed in 1995 pursuant to a joint venture agreement between IGEN and Meso Scale Technologies, a company owned by Jacob Wohlstadter (son of IGEN CEO Samuel Wohlstadter). Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, 503 F. Supp. 3d 156, 163 (D. Del. 2020) ("Post-Trial Op."). The agreement specified a "Research Program" for Meso to perform and included a license agreement—the scope of which is contested here. Id. at 163-64.

Roche, too, has a licensing history with IGEN. In 1998, not long after Meso embarked on its joint venture with IGEN, Roche acquired Boehringer Mannheim [**3]  GmbH ("Boehringer"), which IGEN had previously licensed in 1992 to develop, use, manufacture, and sell ECL assays and instruments in a particular field.² In doing so, Roche inherited Boehringer's license rights, including that field restriction. Id. at 163.

In 2003, IGEN and Roche terminated the 1992 agreement and executed a new agreement granting Roche a nonexclusive license to IGEN's ECL technology in the field of "human patient diagnostics." Id. at 164; Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, No. CV 17-189-LPS, 2019 U.S. Dist. LEXIS 49810, 2019 WL 1332407, at *2 (D. Del. Mar. 21, 2019) ("Summary Judgment Op."). Although this license required Roche to note this new field restriction on its product packaging, J.A. 5448-49, the license permitted sales that resulted in incidental out-of-field use and allowed such sales to continue (absent express prohibition from IGEN) so long as IGEN received 65% of the resulting revenues. J.A. 5438. As part of this transaction, Roche paid IGEN and its shareholders about $1.4 billion, IGEN transferred its ECL patents (including those asserted here) to the newly formed BioVeris, and IGEN shareholders received shares of BioVeris stock. Post-Trial Op., 503 F. Supp. 3d at 164; J.A. 4230.

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