Roche Diagnostics GmbH v. Enzo Biochem, Inc.
992 F. Supp. 2d 213
S.D.N.Y.2013Background
- Enzo and Roche entered a 1994 Distribution Agreement governing sale and distribution of BioProducts for research use only.
- Products are divided into eight groups with restrictions; all products limited to research use, not for diagnostic or therapeutic purposes.
- Roche manufactured 10–11 grams of bio-nucleotides (Group A) 1998–2002 and potentially supplied them to Affymetrix to compete with Enzo.
- Affymetrix had its own Enzo agreement but used Roche’s terminal transferase contrary to Enzo’s arrangement.
- Roche ceased payments to Enzo by July 2004 as Enzo patents expired, prompting Roche’s 2004-2005 suit and Enzo’s counterclaims for breach, patent infringement, tortious interference, and unfair competition.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ambiguity of use restrictions under the Distribution Agreement | Enzo argues restrictions bar sales to commercial entities for research used in diagnostics/therapeutics | Roche contends restrictions are ambiguous or not to be read to prohibit all commercialization | Ambiguity found; summary judgment denied on use-restriction claim |
| Whether Roche violated II.A by manufacturing bio-nucleotides | Roche breached by manufacturing rather than purchasing from Enzo | Agreement only required Roche to purchase exclusively from Enzo for Group A; manufacturing not prohibited | Roche entitled to summary judgment; no breach for manufacturing BioA products |
| Whether Roche’s post-patent-expiration sales breached the Agreement | Roche continued selling Products after patents expired in breach of IV | Enzo did not plead this claim in FAAC; improper to raise at summary judgment | Roche granted summary judgment on this claim (not raised in pleadings) |
| Whether Enzo’s patent-infringement claim should be dismissed | Distribution Agreement authorized Roche’s use of Enzo’s patented property | Ambiguity of the Agreement precludes dismissal of patent claims | Summary judgment denied; patent claims survive for trial |
| Tortious interference with contract | Roche intentionally interfered with Enzo–Affymetrix contract | Enzo failed to show Roche had actual knowledge or intent to induce breach | Roche granted summary judgment; lack of knowledge/intent; claim fails |
Key Cases Cited
- Kirch v. Liberty Media Corp., 449 F.3d 388 (2d Cir. 2006) (elements of tortious interference with contract; knowledge and intent require proof)
- Lama Holding Co. v. Smith Barney Inc., 88 N.Y.2d 413 (N.Y. 1996) (tortious interference and damages requirements; contracting party interests)
- ITC Ltd. v. Punchgini, Inc., 9 N.Y.3d 467 (N.Y. 2007) (unfair competition scope; misappropriation as a core element)
- Shaw v. Time-Life Records, 38 N.Y.2d 201 (N.Y. 1975) (unfair competition—likelihood of confusion and misattribution of origin)