Vizgen accuses Harvard and 10x of patent licence cover-up

Firm says patents-in-suit were developed using $19 million of public money | Biotech also cites “new evidence” in suit with Harvard and 10x.

US biotech firm  Vizgen has accused  Harvard College and  10x Genomics of “betraying the public trust as well as the patent system” by allegedly concealing the details of patent licences that are the subject of an infringement lawsuit.

In a request for a motion to stay filed at the US District Court for the District of Delaware last week (April 25), Vizgen says it has uncovered new evidence showing that Harvard committed to “open and non-exclusive licences” for the patents being asserted against.

Further, it alleges that Harvard “hid its promises” from Vizgen and the public, and argues that the court should stay proceedings on the basis of these “two case-ending issues”.

‘Condition of grant’

Harvard and 10x Genomics  sued Vizgen in May 2022, claiming that the Cambridge, Massachusetts-based firm infringed five of their patents—US Patents 11,021,737, 11,293,051, 11,293,052, 11,293,054, and 11,299,767—through its genomics platform. The patents cover “compositions and methods for analyte detection”.

Vizgen is now claiming that the patents were developed using over $19 million of public funding, awarded to Harvard by the National Institutes of Health (NIH) in 2010.

It holds that through a Freedom of Information Act (FOIA) request, it obtained evidence that shows that Harvard committed to provide open source and non-exclusive rights for all innovations arising from the NIH funding—“the exact opposite” of what it did in reality, Vizgen alleges.

Harvard gave exclusive patent rights to technology developed under the NIH funding to a company founded by a Harvard professor that was sold to 10x Genomics for $400 million in 2020, Vizgen alleges.

Vizgen claims that, with regard to the patents-in-suit, Harvard submitted “only a truncated portion of the grant application to the patent office—cutting off the key pages where it made the licensing commitment”.

It adds that Harvard and the professor “violated their promises by exclusively licensing the patents, depriving the public of rights while maximising their own profits,” and that Harvard’s attorneys discouraged Vizgen from pursuing the FOIA request.

This, says Vizgen, makes the patents unenforceable due to “Harvard and 10x’s unclean hands” and also makes Vizgen a “third-party beneficiary of Harvard’s commitments to the NIH” as it is entitled to a non-exclusive licence.

Vizgen told the court that a stay would resolve key issues based on this new evidence, and prevent it from facing the “undue hardship and irreparable harm from having to defend itself against patents that should not have been asserted in the first place”.

In an unusually quick response, the court has scheduled a hearing for next week to address how the parties propose to move forward on the arguments raised in the motion to stay. Counsel for Harvard and 10x did not immediately respond to LSIPR’s request for comment.

‘Sherman Act § 2 violations’

In a separate suit, also filed in 2022, Harvard and 10x Genomics accused Seattle-based  Nanostring Technologies of infringing two patents covering gene-mapping technology.

Following Vizgen’s filing for a stay, Nanostring says that it was made aware on April 23 for the first time “of an NIH grant revealing that Harvard made a promise to the US government to licence technologies resulting from the grant—including the patents asserted here and in a co-pending German litigation—on an open and non-exclusive basis”.

The firm has asked the Delaware district court for an expedited briefing schedule in light of the claimed information, and has submitted counterclaims for Sherman Act § 2 violations, related state law violations, and breach of contract by Harvard and 10x.

Both Vizgen and Nanostring say that, upon discovering the non-exclusive licence terms under which the patents were allegedly developed, they approached Harvard for such a licence. The firms say that Harvard responded by telling them that it had exclusively licensed the patents to 10x.