Twisting Facts to Capitalize on COVID-19 Tragedy: Fortress v. bioMerieux

By Gene Quinn
March 18, 2020

“The offer of a royalty-free license to any third party working on diagnostics tests directed to COVID-19 is a generous response not only to bioMerieux, not only to all the biopharma companies working on COVID-19, but to everyone, period. We all have an interest in this issue, as the world around us shutters.”

https://depositphotos.com/138845832/stock-photo-fake-news-concept.htmlSome people just hate patents and patent owners, we know that. But when tragedy is used to misinform and to advance an ideological agenda, we should all be able to agree that crosses a line.

Unfortunately, some simply cannot help themselves but to use every opportunity – real or imagined – to take a cheap shot at a patent owner for having the audacity to seek to enforce patent rights, so it should come as no surprise that false and misleading reports would surface in the life sciences world relating to the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). It was only a matter of time.

The True Story

The true story begins in 2018, when Fortress Investment Group acquired the patent assets of Theranos Inc. Fast forward to March 9, 2020, when Labrador Diagnostics LLC filed a patent infringement lawsuit against BioFire Diagnostics, LLC and bioMerieux S.A., asserting U.S. Patent No. 8,283,155 and U.S. Patent No. 10,533,994, patent assets acquired by Fortress Investment Group from Theranos. This patent infringement lawsuit was not directed to testing for COVID-19, and instead focuses on activities by the defendants over the past six years that are not in any way related to COVID-19 testing.

Subsequently, two days after being sued for infringing the ‘155 patent and the ‘994 patent, on March 11, 2020, bioMerieux announced the forthcoming launch of three different tests “to address the COVID-19 epidemic and to meet the different needs of physicians and health authorities in the fight against this emerging infectious disease.”

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The Spin

Once bioMerieux made this announcement on March 11, Fortress and Labrador became a virtual punching bag on the Internet for having the audacity to sue a company that is working on finalizing the development of a test for SARS-CoV-2. Those calling Fortress and Labrador “patent trolls” – and worse – are placing an extraordinarily heavy and unrealistic burden on patent owners. Apparently, if you are a patent owner you are a patent troll unless you are able to tell the future.

Seriously, how were Fortress and Labrador supposed to know that bioMerieux was going to announce two days AFTER being sued that they were working on a test to address the COVID-19 epidemic? And what difference does it make if bioMerieux is pursuing a test for SARS-CoV-2 if they are being sued for other unrelated activities that infringed the ‘155 patent and the ‘994 patent? But there I go interjecting facts into what is supposed to be the lynching of a patent troll by people who hate patents and patent owners and will use any cheap shot they can to malign, mislead and misinform the public.

Trolls Don’t Make Royalty-Free Offers

Notwithstanding this faux outrage and objectively unfair criticism, as soon as Labrador learned that bioMerieux was working on a test for SARS-CoV-2, the company promptly wrote to the defendants offering to grant them a royalty-free license for such tests. But Labrador didn’t stop there. Early yesterday the company also announced that it will offer royalty-free licenses to any third party to use its patented diagnostics technology for tests directed to COVID-19.

The offer of a royalty-free license to any third party working on diagnostics tests directed to COVID-19 is a generous response not only to bioMerieux, not only to all the biopharma companies working on COVID-19, but to everyone, period. We all have an interest in this issue, as the world around us shutters and we attempt to engage in social distancing to curtail the spread of the virus and work to the greatest extent possible to get past this episode and back to normal. It is heartening to see such corporate generosity during this time of national and global adversity.

“Labrador fully supports efforts to assess and ultimately end this pandemic and hopes that more tests will be created, disseminated, and used to quickly and effectively protect our communities through its offer of a royalty-free license during the current crisis,” the press release issued yesterday explained.

Labrador’s actions suggest that is precisely the case; they are all in and are putting their patents to work without the expectation of remuneration. That doesn’t sound like a patent troll to me.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments. Join the discussion.

  1. Jonathan R Stroud March 18, 2020 2:18 pm

    I agree that the COVID-19 angle looks a little strained. To me, it’s more using Theranos patents to go after Salt Lake diagnostics companies that is the story here.

  2. Jan Verbist March 18, 2020 2:53 pm

    What kind of device do they produce exactly?

  3. J March 18, 2020 7:10 pm

    Theranos patents? Really?
    Is this some alternate reality where Holmes et al. *actually* invented what they claimed?
    Last I checked, we’re still on planet Earth, where Theranos failed spectacularly, being famously unable to achieve actual reduction to practice. Holmes fooled the PTO and got a patent for something she hadn’t actually invented, plain and simple (it happens, probably a natural consequence of the act of filing an application being considered a “constructive” reduction to practice). Shouldn’t the fact that the patents in question are merely “aspirational” (to put it kindly) render the patent invalid?

  4. Benny March 19, 2020 3:44 pm

    From all accounts the Theranos patent specifications do not meet the requirement for enabling, as such would not and should not survive an invalidation challenge. On the face of it, it does look as though Fortress is one of the “bad actors” attempting to abuse the system.

  5. C March 21, 2020 8:52 am

    Sorry, did Theranos patents ever produce a working device or product?

    The royalty-free licence looks like pure PR spin, it blew up in their face, and they needed to backpedal, while nominally retaining claim to ownership of the relevant patent IP.
    Not to mention the Intel-Apple antitrust lawsuit against Fortress last year doesn’t add to a particularly rosy picture, in which Fortress seems to have a history of patent acquisition & litigation as its means of raising capital. This still looks like copyright-trolling to me.

  6. Gene Quinn March 22, 2020 1:08 pm

    C @5…

    Your comment demonstrates an astonishing unfamiliarity with the issues for someone who took the time to comment.

    First, you say that this “looks like copyright-trolling” to you? Really? Doesn’t copyright trolling require a copyright owner abusing a copyright?

    Second, you say that Fortress acquired the patents for purposes of litigation. That isn’t true at all. Fortress acquired the patents because they lent money to a company that effectively went bankrupt.

    Seriously, if you hate Fortress and are going to attempt to malign the company can you at least put in a little effort to inform yourself?

  7. Jan Verbist April 1, 2020 1:34 pm

    “Sorry, did Theranos patents ever produce a working device or product?”

    Patents are paper tigers, there is no requirement to submit a working prototype.

  8. Benny April 1, 2020 2:05 pm

    Jan,
    There IS a requirement to provide a specification sufficient to enabled a skilled artisan to create a working prototype. The fact that Theranos employees could not do that, despite having the patent specification at hand, proves that the requirement was not met, therefore the patents should be invalid.

  9. Anon April 1, 2020 7:16 pm

    Benny,

    That is not an accurate paraphrase.

    You do realize the scope of the phrase “without undue experimentation” right?

    There is NO proof in your assertion that Theranos employees NOT doing something that therefore a requirement was not met.

    You speak of legal conditions with a smell of an engineer (and the wanting of a patent to be an engineering document when it is not).

  10. Gene Quinn April 1, 2020 7:42 pm

    I have to agree with Anon, Benny. What you are saying makes all the sense in the world to a bunch of people sitting around a bar who don’t understand patent law after a couple drinks. That certain people may not have been able to do something isn’t the test. The test is whether the RIGHT people would be able to make and use the invention without undue experimentation. That phrase “undue experimentation” necessarily means we tolerate some uncertainties in a patent specification and that blue print level detail or engineering drawing level of detail is not required (and that is in fact the law). So, would the proper subset of those of skill be able to make and use without undue experimentation? None of us can know that. That single issue would require voluminous briefing, expert testimony and multiple days of trial (and pre-trial).

  11. Benny April 2, 2020 2:55 am

    Gene,
    What you are saying, in effect, was that Theranos could have produced a working device without UNDUE experimentatipn, and therefore they were not actually scamming their investors, and basically Holmes is not guilty of significant wrondoing. All published accounts point to a different conclusion.

  12. Anon April 5, 2020 11:20 am

    Benny,

    You cannot seem to get out of your own way.

    Look at the instant case. When Gene re-emphasizes the difference between legal and engineering, you jump right back into the fray with some type of ‘real person’ test. There is NO “in effect” as you WANT there to be.

    Your ‘want’ is simple — and unmistakable — error.

    You are always welcome to have your opinion of anything. You are NOT welcome to push your opinion in the face of HAVING an informed opinion.

    Willful ignorance is worse than ordinary ignorance.

    On top of that, your willful ignorance is persistent even in the face of those who know better who attempt to educate you, AND that state of willful ignorance ALWAYS happens to align with the viewpoint of the Efficient Infringer camp.

  13. Benny April 5, 2020 12:45 pm

    Anon, you can wave your hands all you like and try to pretend that legal documents have no bearing on the real world, but here you were presented with an either/or situation:
    Either the specifications of the Theranos patents were sufficient to enable bio-tech engineers, with due experimentation, to produce a working prototype, or they were not. The fact that Theranos, could not produce a prototype strongly suggests that the the specifications were NOT sufficient to enable one skilled in the art to reproducec the invention without undue experimentation. You went so far as to say yourself that that is a LEGAL requirement for a patent to be granted. So what is your problem now? Do you think that requirement should be repealed? Or are you just being argumentative fir arguments sake?

  14. Anon April 5, 2020 3:24 pm

    Benny,

    Your presentation is in error.

    I “get” that you want to control the narrative, but you do NOT get to do that when doing so gets the law wrong.

    THAT is my “problem” now. As is typical for your posts, this “problem” runs rampant when YOU get the law wrong.

    Try to be informed; otherwise, your attempt to set up a narrative will be (appropriately) dismissed out of hand.

  15. Ingrid Phil April 23, 2020 5:20 pm

    My favorite part about this article is the “fast forward” which ignores the part where Labrador Diagnostics LLC is formed a few days before the lawsuit is filed. fun stuff not a great article.

  16. Shane June 4, 2020 4:52 pm

    Phil – but Fortress owns Labrador &, as Gene pointed out, invested in Theranos. So, this is a company seeking a return on their investment. Sounds like capitalism to me.

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