Patent Wars

In its bitter, seven-year-old lawsuit against Promega Corp., the Roche Group has just been deprived of one of its patents covering Taq DNA polymerase, the enzyme crucial to automating PCR. The federal judge hearing the case decided last month that the inventors of a method for purifying this enzyme had dealt dishonestly with the U.S. Patent and Trademark Office (PTO) in applying for the patent in 1988 and 1989. Because of the inventors' "inequitable conduct," Judge Vaughn R. Walker of the Northe

Douglas Steinberg
Jan 9, 2000

In its bitter, seven-year-old lawsuit against Promega Corp., the Roche Group has just been deprived of one of its patents covering Taq DNA polymerase, the enzyme crucial to automating PCR. The federal judge hearing the case decided last month that the inventors of a method for purifying this enzyme had dealt dishonestly with the U.S. Patent and Trademark Office (PTO) in applying for the patent in 1988 and 1989. Because of the inventors' "inequitable conduct," Judge Vaughn R. Walker of the Northern District of California ruled that all claims of the patent are unenforceable.1 The Roche Group (formerly Hoffmann-LaRoche) vows to appeal.

Two U.S. subsidiaries of Roche initiated the lawsuit in 1992, charging Promega with patent infringement. Promega defended itself first by questioning the patent's validity and later by challenging the inventors' strategy for patent approval. Recent rulings in the case have largely cut against Roche, but future developments...