Innogenetics v. Abbott – 2008 compulsory license granted for HCV genotyping kits under eBay v. MercExchange

This is an update to a 2007 report regarding a district court decision in the Innogenetics v. Abbott case here, regarding Abbott’s infringement of Innogenetics’s patents for HCV genotyping. The previous blog discusses the ruling at the district court level that granted a permanent injunction under the then-recent eBay test.

The subsequent case history shows that in January 2008, on appeal to the Court of Appeals for the Federal Circuit, the injunction was found to be an abuse of discretion. The case citation is Innogenetics v. Abbott Laboratories, 512 F.3d 1363 (Fed. Cir. 2008).

The Court focused on the fact that Innogenetics had been awarded damages including an upfront market entry fee of $5.8 million “as an amount paid in anticipation of Abbott’s long-term license to sell its products,” and noted that the request and receipt of compensation that contemplates or is based upon future sales in a long term market blunted an assertion of irreparable harm.

The case was remanded to the district court to determine the terms of a compulsory license.

On April 14, 2008, Innogenetics announced that it had reached a $9.5 million settlement and non-exclusive licensing agreement with Abbott to sell the HCV genotyping kits.

The resolution of this case is very similar to the Roche/Chiron litigation in Germany on patents for HCV genotyping kits, where Roche’s pursuit of a compulsory license for Chiron’s patents resulted in a settlement in 2001 granting Roche a non-exclusive license, and similar litigation in Australia, the Uk, and other countries seeking to obtain effective and affordable screening of HCV for their blood supplies.

Articles regarding the Federal Circuit’s decision:

Robert Dailey, “Innogenetics Loses Injunction; Abbott HCV Genotyping Test to Remain on the Market,” Patent Docs.

Andrew Goldman