Enzo Biochem’s Patent Infringement Claim Against Roche Survives Summary Judgment, While Remaining Claims Do Not, by Judge Sullivan

Roche Diagnostic Diagnostics GmbH et al. v. Enzo Biochem, Inc.

Case Number: 1:04-cv-04046-RJS (Dkt. 132) 

Plaintiff Roche was unable to defeat on summary judgment a patent infringement counterclaim brought by Defendant Enzo Biochem. Following a business dispute over a patent license, licensee Roche filed suit against patentee Enzo. Enzo counterclaimed, alleging patent infringement, breach of contract, tortious interference with business relations, and unfair competition.

Concerning patent infringement, Roche argued that its sale of products was covered by the license agreement. The court found, however, that the license agreement was ambiguous as to the meaning of the clause “all Products are for research use only and are not intended for or to be used for diagnostic or therapeutic use.” Accordingly, the court declined to rule at summary judgment that Roche’s sales were authorized.

The court also decided various non-patent issues. First, it found that the license permitted Roche to manufacture the licensed products for its own use. Second, the court granted Roche summary judgment over Enzo’s allegation that Roche violated the license’s payment provisions, because Enzo made this allegation in briefing papers but not in a pleading. Third, in light of the contractual ambiguity noted above, the court refused to grant summary judgment to Roche on a third breach of contract allegation.

Enzo’s counterclaims of tortious interference with business relations and unfair competition failed. Enzo alleged that Roche had tortuously interfered with its business relations with a third party, Affymetrix, who also had a contract with Enzo. The court noted that Enzo briefed tortious interference with contract, which it said demanded less demanding proof, instead of briefing tortious interference with business relations. But even with lessened requirements, the court granted Roche’s summary judgment motion because Enzo provided no evidence that Roche knew about Enzo’s agreement with Affymetrix or that Roche intended to induce a breach of that agreement. Finally, because “nothing in Enzo’s argument with respect to [unfair competition] – let along in the record – demonstrates that Roche caused the public to confuse the identity of Roche’s products with Enzo’s products, Enzo has missed the mark for unfair competition,” and the court accordingly granted summary judgment to Roche.

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