Bio-Rad and 10X Genomics end patent fight with new licensing deal
Bio-Rad Laboratories has settled its long-running dispute with 10X Genomics over patents covering genetic analysis tech and both companies have negotiated an agreement to cross-license their products.
The settlement and deal was confirmed by the biotech companies on Tuesday, July 27, and resolves multiple long-running litigations in Massachusetts, Delaware, California, Germany, and before the US International Trade Commission (ITC). Both companies have now agreed that each company’s patents are owned and valid.
Background
Back in 2015, the University of California and RainDance Technologies (which is now owned by Bio-Rad) filed a suit against 10X Genomics, alleging infringement of several patents.
In November 2018, a Delaware jury found that 10X Genomics had infringed three patents, and awarded Bio-Rad nearly $24 million in damages. Bio-Rad also secured its motion for a permanent injunction, stopping 10X Genomics from making any sales of infringing products to new customers.
But in February 2020, 10x Genomics won an import ban against Bio-Rad from the ITC. In June this year, the US Court of Appeals for the Federal Circuit upheld the ITC decision finding that 10X Genomics infringed two Bio-Rad Laboratories gene sequencing patents.
The settlement announced this week includes a global patent cross-licence for patents held by both Bio-Rad and 10x Genomics, addressing outstanding issues in the field of single-cell genomics. In addition to past and future royalties, Bio-Rad will receive broad freedom-to-operate in the single-cell market and maintains exclusivity to its microwell single-cell IP.
Under the terms of the settlement, Bio-Rad and 10x Genomics have granted each other a non-exclusive, worldwide, royalty-bearing licence to develop products and services related to single-cell analysis.
End to worldwide litigation
“We are pleased to put an end to the worldwide litigation in the licence agreement between Bio-Rad and 10x Genomics,” said Norman Schwartz, Bio-Rad president and CEO in a statement.
“This settlement and the resulting licence agreements along with our other recent IP settlement serve as a validation of the importance and value of Bio-Rad's IP rights,” he added.
The agreement is for the life of the patents, and the companies have agreed not to sue each other on products or services on other patents owned or exclusively licensed by each company.
“Today's settlement underscores the value of our innovation and strong patent portfolios built over the last nine years,” Eric Whitaker, general counsel of 10x, said in a statement. “10x has invested nearly $1 billion in research and development, which has led to more than 1,100 issued and pending patents and catalysed a revolution in genomics around the world.”