A jury for the U.S. District Court for the Western District of Wisconsin awarded $52,009,941 in damages to Promega Corporation from Madison, Wis. on Wednesday for infringing sales by Life Technologies from Carlsbad, Calif.
The jury also found that the infringing sales by Life Technologies were made willfully. The court may increase the final damage up to triple the amount in light of the willfulness verdict, according to Craig Christianson, general counsel for Promega.
In November 2011, the Court’s ruling on Summary Judgment confirmed the validity of Promega Short Tandem Repeat (STR) patents, and found direct infringement by Life Technologies due to their sale of STR kits beyond the scope of their licensing agreement with Promega, according Christianson.
“In the early to mid-2000s, Promega granted a license to Life Technologies for our STR patents to run on their high-speed instruments. Our products use technology for paternity testing and in crime scene investigations, but we needed Life Technologies’ instruments to run our patents. Life Technologies needed our patents as well – so we really needed each other,” said Christianson. “However, Life Technologies began to sell our patents to customers beyond the scope of their license – to universities and organizations that may do paternity or other testing.”
Christianson said the court also set a schedule to consider an injunction against Life Technologies for their sales of infringing products to any customer outside of their licensing agreement.
“We wanted Life Technologies to stop selling to customers outside of the agreement and we wanted the damages returned to us,” he said.
“The Court’s ruling and the jury award confirm the value of Promega STR technology and its contributions to genetic analysis in the fields of research and molecular diagnostics,” says Bill Linton, Promega CEO, in a press release.
Promega Corporation is a leader in providing innovative solutions and technical support to the life sciences industry. The company’s 2,000 products enable scientists worldwide to advance their knowledge in genomics, proteomics, cellular analysis, molecular diagnostics and human identification.