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13 January 2022Big PharmaAlex Baldwin

PeriRx’s breach of licensing contract suit can’t prevail

Oral diagnostics company PeriRx has lost a patent licensing suit against the University of California and research company RNAmeTRIX, claiming that they had breached sublicensing agreements.

In a memorandum handed down Monday, December 10, the US District Court for the Eastern District of Pennsylvania concluded that PeriRx’s claims fail.

Firstly, it held that PeriRx’s First Amended Complaint (FAC) did not mention many of the “supposed breaches” that PeriRx cited and that PeriRx sought to hold RNAmeTRIX liable for conduct “in which it did not participate”, the court ruled.

“These and other flaws mean there are no triable issues of fact on these remaining claims,” the court ruled.

District court judge Joshua Wolson denied PeriRx’s request for summary judgment, holding it could not prevail on its breach of contract claims, and granted RNA’s opposing motion for summary judgment in a separate order.

Case background

In January 2008, RNA entered into an exclusive option agreement to obtain an exclusive licence agreement of patent applications from the University of California, among other things.

After signing the agreement, RNA looked for a sublicensee, eventually granting PeriRx a sublicence in 2010. PeriRx used the sublicence to develop saliva-based cancer tests.

Following two amendments to the agreement, the licence was eventually terminated in March 2019.

During this period, the university also granted an exclusive licence to Aruras Holdings and Liquid Diagnostics for US Patent 9,932,635 referred to as the “EFIRM Patent”. The EFIRM patent was also intended to be sublicensed to EZLife Bio when licensed to Aruras, but no sublicence was agreed upon.

The university also sublicensed another patent to Aruras, referred to as the “EGFR Patent”.

PeriRx contended that both the EFIRM and the  EGFR patent incorporate the same methods as the “Probe immobilisation patent” that it had sublicenced from RNA and that university had worked “behind the scenes” to transfer PeriRx’s rights to EZLife and Liquid Diagnostics.

In May 2020, PeriRx brought a lawsuit against the university, RNA, EZLife, and Aruras but its cases against all but RNA were dismissed, prompting PeriRx to file a first amended complaint.

The first amended complaint contended that RNA committed various breaches of the exclusivity provisions of the licence agreement with respect to “point-of-care” patents and their designated indication for treating diabetes.

Now, PeriRx’s final remaining case against RNA has been dismissed. As a result, RNA is entitled to its own summary judgment of PeriRx’s claims against it.

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More on this story

Europe
19 May 2016   Bayer and ERS Genomics have signed a patent licensing agreement which gives Bayer access to ERS’s CRISPR/Cas9 genome-editing patents.
Biotechnology
29 July 2021   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.
Big Pharma
24 January 2022   PeriRx has been hit with sanctions over its conduct after its breach of licensing suit failed in a patent licensing dispute against the University of California.