PacBio pledges to fight invalidation of patents after bitter dispute
California-based Pacific Biosciences (PacBio) has accused a UK rival of exploiting the coronavirus pandemic in a patent infringement trial.
In a statement issued yesterday, March 18, PacBio said it was “disappointed” with a jury verdict which found several of the company’s genome-sequencing patents to be invalid.
PacBio had sued Oxford Nanopore Technologies at the US District Court for the District of Delaware, accusing the UK DNA sequencing company of infringing four patents.
The Delaware litigation is just one part of a long-running dispute between the companies over DNA nanopore sequencing technology, which has also seen proceedings at the European Patent Office, German courts, and the US International Trade Commission.
According to Oxford Nanopore, nanopore sequencing technology enables direct, real-time analysis of long DNA and RNA fragments.
In a verdict issued yesterday, March 18, a Delaware jury found that a total of three patents asserted by PacBio in the proceedings were invalid on the grounds of enablement, written description and indefiniteness. The jury declined to find the fourth patent valid or infringed.
“We are disappointed with today’s verdict, which appears to be internally inconsistent regarding the validity of our patents,” said PacBio CEO Michael Hunkapiller.
‘Brazen attempts’ to sway the jury
The PacBio chief also criticised Oxford Nanopore’s conduct during the trial.
“We were especially dismayed at Oxford Nanopore’s brazen attempts during trial, in direct violation of the court’s orders, to improperly sway the jury with references to previous legal proceedings between the parties involving different patents and legal questions,” the statement said.
Hunkapiller also accused Oxford Nanopore of attempting to “profit from the current coronavirus pandemic by incorrectly suggesting that if the jury voted in favor of Pacific Biosciences it would be impeding critical efforts to combat the COVID-19 outbreak”.
A letter to the court from PacBio’s lawyer said that Oxford Nanopore had “intended to inflame passions improperly”, and “taint the jury” with misleading evidence about the use of its technology in the fight against COVID-19.
According to PacBio’s letter, counsel for Oxford Nanopore told the jury “without evidence” that the technology at issue in the suit was being used by scientists to detect the spread of the coronavirus.
Oxford Nanopore’s website says it has been working with public health laboratories around the world to support the rapid sequencing of the novel coronavirus using its technology.
But the UK company said this had no impact on the verdict, as the jury was instructed to disregard this element.
A Oxford Nanopore spokesperson told LSIPR that “during approximately 30 hours of testimony, the current epidemiology work in the COVID-19 outbreak was mentioned once, for approximately two minutes, in the first hour”.
“After objection from PacBio, the judge directed the jury to ignore the issue and focus on the patents,” the spokesperson added.
Oxford Nanopore’s CEO Gordon Sanghera said the jury had recognised his company as “the true innovators in the field of nanopore sequencing”.
“This was the latest in a long line of nefarious attempts to exclude Oxford Nanopore from the market,” Sanghera said. He added: “We will continue to deliver innovative sequencing technology to our customers, who are using the technology to make a profound, positive impact on society. We will continue to fight attempts to ‘tangle up’ our innovation.”
PacBio indicated that it intends to fight the district court’s verdict, including at the US Court of Appeals for the Federal Circuit if necessary.
“We continue to believe that all of our asserted US patent claims are valid and infringed by Oxford Nanopore, and we believe the law and the facts support our positions,” Hunkapiller said.
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