The settlement ends a 19-month legal battle, which started when Inverness filed a complaint in the U.S. District Court for New Jersey in April, 2008. In the suit, Waltham, Mass.-based Inverness alleged that OraSure violated one of its U.S. patents with the OraQuick ADVANCE Rapid HIV-1/2 Antibody Test.
Besides the cash settlement, which will see OraSure pay $3 million, Inverness agreed to:
- Grant a worldwide, non-exclusive, royalty-bearing patent license for the OraQuick HIV-1/2 test and the OraQuick HCV test;
- The non-exclusive rights to distribute certain rapid, point-of-care, flu, strep, drugs of abuse and pregnancy tests manufactured by Inverness under a private label;
- First negotiation rights for 120 days for sales, marketing and distribution agreements of the OraQuick HIV test as a possible over-the-counter product in conjunction with Inverness’ joint venture with Proctor & Gamble (PG), which the companies signed in 2006 to market the Waltham company’s products;
- OraSure will grant Inverness exclusive distribution rights to the OraQuick HCV test in the employee health services and home healthcare markets and in acute care clinics located in pharmacies and other mass retail outlets in the U.S.
OraSure officials said the company expects to post a net loss for the fourth quarter as a result of the settlement.