IGEN International v. Roche Diagnostics GmbH

IGEN International, Inc. (IGEN) (plaintiff) developed a patented diagnostic process based on electrochemiluminescence (ECL). In 1992, IGEN entered into a license agreement with Roche Diagnostics GmbH (Roche) (defendant). IGEN granted Roche the right to develop and market products using the patented ECL technology in a specified field: hospitals, blood banks, and clinical reference laboratories. The licensed field of use specifically excluded any setting in the presence or proximity of a patient, e.g., in homes, at patient bedsides, or in physician offices. IGEN also reserved to itself the right to develop applications of the patented product in the patient point-of-care market. Using its license, Roche eventually developed a product, Elecsys, that weighed between 150 and 200 pounds and was intended for laboratory settings. IGEN was working on developing an instrument, named ECLM, for application in the point-of-care market. ECLM would be small enough to use at a patient’s bedside. Beginning in 1997, Roche representatives visited doctors’ offices to sell models of Elecsys for use in physicians’ in-office laboratories. At least five physicians’ offices purchased an Elecsys product. IGEN discovered Roche’s activities, sued Roche, and moved for a preliminary injunction to stop Roche from further sales of Elecsys to physicians’ offices for use in in-house laboratories. IGEN established that Roche’s conduct likely violated the licensing agreement, eliminated a potential market for ECLM, and deterred potential partners from investing in ECLM. The court conducted a balancing test and granted a preliminary injunction in IGEN’s favor. Roche appealed.