An appellate court judge has denied a request by BioPet Vet Lab Inc. and PetSafe, both of Knoxville, Tenn., to stop an injunction that prohibits them from selling their dog breed identification test kits.
The injunction was requested by Mars Veterinary as part of a patent infringement lawsuit it filed against the two companies. In the lawsuit, filed in December 2010, Mars claims BioPet infringed on “one or more of the claims” of the U.S. patent it licenses to make its Wisdom Panel dog breed identification products “by using, selling and offering to sell the dog breed identification services associated with its DNA Breed Identification Kit product.” The suit was later amended to add PetSafe, which began marketing and selling BioPet’s Breed Identification Kits under the PetSafe brand name earlier this year.
The defendants argued that they were not infringing on the patent because they were not performing all of the steps outlined in the analysis process. They also challenged the validity of the patent itself, according to court documents.
In March 2011, a U.S. District Court judge for the Eastern District of Virginia granted Mars a preliminary injunction that required BioPet and PetSafe to stop selling their DNA breed identification products and dog breed identification services associated with the products. Shortly thereafter, the court lifted the injunction, allowing BioPet and PetSafe to continue serving its customers. However, on June 15, the court reinstated the injunction, according to both Mars and BioPet.
PetSafe has suspended the sale of its DNA tests and is currently working to honor its commitment to consumers who have purchased the kits, said brand manager Robin Hawn.
BioPet is no longer in the dog breed identification business and has sold its DNA identification product to another company outside of the United States, according to court documents.
BioPet CEO Tom Boyd said the company has put in a request with the U.S. Patent and Trademark Office to review Mars’ patent, which was issued to the Fred Hutchinson Cancer Research Center in June 2010. Boyd said the office has until July 26 to do so.
Boyd said he does not anticipate getting back into the business even if the patent office finds Mars’ patent to be invalid, because too many of his customers have not been able to receive their DNA results due to the injunction. This inability to complete customers’ orders has damaged the company’s reputation, he said.
“With this ruling, too many of our customers have gotten the shaft so to speak and it would make no sense for us to come back in and try to change people’s mind,” Boyd said.