Irell & Manella

The original version of this report was published on the biweekly IP briefing Skilled in the Art.

Mike Masnick's story at Techdirt about a Fortress Investment Group shell using Theranos-developed patents to sue a diagnostics company that's working on a COVID-19 test created a sensation Monday, and rightly so. If you wanted to create the most infuriating possible "patent troll" narrative, this one would be hard to top.

But a few other factors are worth considering. First, I think it was a low blow to refer to Irell & Manella as "the monkey selfie copyright law firm." That was a pro bono case led by an attorney no longer at the firm. This seems as relevant as describing Gibson, Dunn & Crutcher as "the asylum seeker law firm." More to the point, in the classical patent troll narrative, the troll and its lawyer are asserting weak patents in a quest for quick nuisance-value settlements worth less than the cost of litigation. Irell takes a lot of its patent cases all the way to trial, including three nine-figure verdicts in the last four months.

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Second, as pointed out in Labrador Diagnostics' complaint, defendant BioFire isn't situated like a mom-and-pop coffee shop blindsided by an outrageous demand letter. BioFire parent bioMerieux is a $2.5-billion-a-year company that retained Williams & Connolly to bring its own infringement suit against Hologic over that company's HIV tests. Last month a jury found that all six of bioMerieux's asserted patent claims were invalid.

Third, Fluidigm and Wilson Sonsini Goodrich & Rosati (the Pelican Bay law firm) sued bioMerieux last year over the some of the same film array technology. BioMerieux, this time represented by Kirkland & Ellis, settled earlier this month.

Finally, as Masnick reported earlier today, Fortress/Labrador put out a statement Tuesday saying that when it filed its suit last week, it didn't know that BioFire was using the accused technology to develop a COVID-19 test. "When Labrador learned of this, it promptly wrote to the defendants offering to grant them a royalty-free license for such tests," the company said in the statement, adding that it "fully supports efforts to assess and ultimately end this pandemic."

Masnick is skeptical of what's meant by "an offer to grant" a license rather than an outright waiver of rights to COVID-19 tests. He also points out that we're still "talking about questionable patents from Theranos, a firm that was shown to be a sham, with technology that never worked."

If that's the case, it should be easy enough for bioMerieux to file an IPR and let the PTAB do its thing, or ask U.S. District Judge Maryellen Noreika of the District of Delaware, who is presiding over the case, to impose Rule 11 sanctions.