10x Genomics awarded $31m in key ruling over NanoString
District court’s verdict found NanoString infringed on seven patents related to protein detection tech | Marks the third victory for 10x Genomics in the last six months | NanoString ‘must drop the charade’ says 10x CEO.
10x Genomics has been awarded $31 million in damages in the latest round of its legal dispute against NanoString Technologies.
On Friday, the US District Court for the District of Delaware unanimously ruled in favour of 10x Genomics, finding that NanoString’s GeoMx Digital Spatial Profiler and other products for RNA and protein detection willfully infringed seven patents owned by Prognosys and exclusively licensed to 10x Genomics.
The damages awarded cover the period from May 6, 2021, through to October 13, 2023, for sales of the infringing GeoMx products.
NanoString CEO Brad Gray said in a statement: “We remain resolute in our belief that the patents that 10x Genomics has asserted describe a fundamentally different scientific method than that which is used for our GeoMx system.
“Simply put, we believe the asserted patents are invalid, that we don’t infringe these patents, and that we should be vindicated on appeal.”
Gray, who saw NanoString’s stock fall by around 50% following the ruling, added that the verdict does not prevent NanoString from continuing to sell GeoMx products.
“We believe that we will defeat any request by 10x Genomics for a potential future injunction and that we will continue to sell our GeoMx products worldwide without interruption,” said Gray.
10x: NanoString ‘must drop the charade’
10x Genomics intends to pursue ongoing royalties for NanoString's continued infringement beyond October 13, treble damages, attorney's fees, a permanent injunction against GeoMx product sales in the US, and pre- and post-judgment interest.
Eric Whitaker, chief legal officer at 10x Genomics, said the jury's decision marks the third time in the past six months that NanoString has been found to infringe 10x Genomics’ patents.
Three separate courts have found that both NanoString's CosMx and GeoMx products infringe nine separate 10x patents, said Whitaker in a statement.
“At some point, NanoString must drop the charade that it is 'confident' it does not infringe the 10x patents and the patents are invalid,” he added.
“It is essential that 10x protect our patents from those who wrongly and willfully use them so we can advance our mission and continue to innovate and push science forward."
Earlier rulings by the Unified Patent Court (UPC) and the Munich Regional Court resulted in injunctions against NanoString for infringing CosMx Spatial Molecular Imager instruments and CosMx reagents for RNA detection.
The seven patents in question, include US patent numbers: 10,472,669; 10,961,566; 10,983,113; 10,996,219; 11,001,878; 11,008,607; and 11,293,917.
10x Genomics still has an additional suit against NanoString in Delaware, alleging infringement of multiple patents by NanoString's CosMx Spatial Molecular Imager.
The trial for this case is scheduled for September 2024.
The counsel for 10x Genomics is Matthew Powers, Paul Ehrlich, Stefani Smith, Robert Gerrity, Li Shen, Smantha Jameson, Ronald Pabis, Kiley White, Joanna Schachter from Tensegrity Law Group. Additionally, Jason Rawnsley, Fedrick Cottrel, Alexandra Eqing from Richards, Layton & Finger.
The counsel for NanoString is Edward Reines, Derek Walter, Karnik Hajjar, Christopher Pepe, Yi Zhang from Weil, Gotshal & Manges, and Brian Farnan, and Michael Farnan from Farnan.
