Nova’s Diabetes Care Products Held Not To Infringe Roche’s Claims

Posted February 12th, 2012.

On July 27, 2010 The Honorable Joseph J. Farnan of the United States District Court for the District of Delaware issued an order granting client Nova Biomedical Corporation’s motion for summary judgment of non-infringement of two patents asserted by Roche Diagnostics Operations Inc. and Corange Int’l Ltd. The Court’s order is based on the September 15, 2009 claim construction decision in which Nova prevailed on key claim terms. Based on the Court’s claim construction plaintiff Roche conceded that Nova’s diabetes care products do not infringe any claims of Roche’s asserted patents.

Plaintiff Roche Diagnostics Operations Inc. is an indirect subsidiary of Roche Holding Ltd, of Basel, Switzerland, one of the largest pharmaceutical and diagnostics companies in the world. In its November 2007 Complaint, plaintiff Roche accused Nova and six other companies of infringing the claims of two U.S. patents directed to methods of determining the glucose concentration of a blood sample using electrochemical sensors. The Nova product at issue was the NovaMax™ glucose monitoring system, which includes a meter and test strips. Nova maintained from the start that it used its own proprietary techniques and not those disclosed in any Roche patent. The Court agreed.

This marks the third consecutive case in which client Nova has prevailed against a life sciences industry giant. In 2009, a unanimous federal jury in the United States District Court for the Central District of California rejected all claims brought by plaintiff Medtronic MiniMed, a Medtronic, Inc. subsidiary, which included trade secret misappropriation, breach of contract, and conversion. And in 2008, Nova prevailed in the United States District Court for the Northern District of California in a patent infringement suit filed by plaintiffs TheraSense Inc. and Abbott Laboratories. Following summary judgment, a bench trial and a jury trial, three of four patents asserted by TheraSense were held to be invalid, two of the patents not infringed and one was declared unenforceable resulting in a judgment awarding millions of dollars in attorneys fees to Nova and a co-defendant also represented by the Firm, Becton, Dickinson and Company. In January 2010, the United States Court of Appeals for the Federal Circuit upheld the determinations of invalidity, non-infringement and unenforceability with respect to all four Abbott patents.

All together, Ropes & Gray has now successfully defended Nova against charges of infringement of six patents and claims of breach of contract, misappropriation of trade secrets, tortious interference and conversion.

“This is a tremendous victory that allows Nova to continue selling the NovaMax meters and test strips,” said lead trial counsel Jim Badke. “The NovaMax meters and strips use state of the art technology that improves patient compliance, safety and overall health.”

In addition to Badke, members of the Ropes & Gray litigation team representing Nova in the Roche case include partners Jeanne Curtis and Sona De; associates Michael Kahn, Matt Traupman, Simon Fitzpatrick, Jamie Lucia, Michael Rueckheim and Andrew Koning; paralegals Deliah Burns and LaToya Graham; litigation support analyst Lisa Postell; graphic designers Carson Dottin, Joseph D’Imperio and Doron Greene; and secretaries Joyce Signorelli and Anna Capoziello.