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University of Alberta Finds Second Home for Lab-on-a-Chip IP in Microchip Biotechnologies

Microchip Biotechnologies, an early-stage Dublin, Calif.-based biotech company, has exclusively licensed a bead-based microfluidic technology from TEC Edmonton, the technology-transfer arm of the University of Alberta, the company said recently.
Microchip, which manufactures nanofluidic sample-preparation and analytical instrumentation for a variety of markets, licensed the patent to increase its freedom to operate in the microfluidic sample-prep space, and plans to continue in-licensing IP to bolster its patent portfolio in this area, a company executive said last week.
For the University of Alberta, although the deal is “average” in size, according to a university official, it is significant because a prior licensing deal for the IP with a different company failed to result in a commercial product.
Under the terms of the deal, Microchip has licensed US Patent No. 6,432,290, entitled “Apparatus and method for trapping bead-based reagents within microfluidic analysis systems,” developed by University of Alberta researcher Jed Harrison.
The University of Alberta said that the technology enables trapping of beads on microfluidic chips, as well as “packing” and “unpacking” of the beads and associated biomolecules.
Harrison, who is professor and chair of the University of Alberta’s department of chemistry, is a well-known microfluidics researcher and one of the academic originators of the lab-on-a-chip concept.
In 2001, he co-founded Advanced Integrated Microsystems, a University of Alberta spin-off developing microfluidics-based platforms for cell-based assays and proteomics. AIM has licensed several of Harrison’s patents from the University of Alberta, including US Patent No. 6,900,021, entitled "Microfluidic system and methods of use," relating to methods for testing compounds against cells in a microfluidic environment.
However, AIM did not have an interest in licensing Harrison’s ‘290 patent from the University of Alberta because it wasn’t directly related to the company’s focus area, Kazua Adachi, director of technology transfer at TEC Edmonton, told BTW last week.
According to Adachi, TEC Edmonton then licensed the patent to another Canadian company that worked with the technology for almost five years before surmising that it could not effectively commercialize the IP. Adachi declined to identify the company due to prior confidentiality agreements.
As a result, TEC Edmonton regained control of the IP and again attempted to market it to interested parties, including AIM, which still was not interested. However, through what Adachi called “targeted marketing,” TEC Edmonton was eventually able to identify Microchip Biotechnologies as a strong suitor for the technology.
“We looked at the patent, went through a technical review, and saw certain aspects of the claims in that patent that we thought would fit into what we’re developing for certain products,” Larry Kopjak, senior director of business development at Microchip Biotechnologies, told BTW. “Bluntly said, it would get around some other IP that may have blocked us from developing a certain chip.”
Kopjak added that there is a plethora of IP surrounding microfluidics-based methods for life sciences analytics, and that as a result Microchip has engaged in heavy due diligence.
“As a way to have freedom to operate in this space, there is a lot of IP out there, and we’ve been strategically acquiring it so we can practice in this space,” he said.
The majority of Microchip’s in-licensed IP, including some core patents developed by Richard Mathis at University of California, Berkeley, supports the company’s primary product area of front-end sample preparation devices for life sciences applications.
“We’ve done some other things, but that’s the primary area,” Kopjak added. “For example – taking in different samples, whether they be blood, serum, or something like that; extracting the DNA on-chip; and then taking the DNA and doing whatever application, such as real-time PCR, for the analysis.”
Kopjak said other potential applications for the chip-based, sample-prep tech include “streamlining” DNA sequencing and, in particular, automating Sanger-cycle sequencing; and reducing the cost of DNA-based molecular diagnostic screens.

“Bluntly said, it would get around some other IP that may have blocked us from developing a certain chip.”

“So the whole idea of our company is to look at different applications – real-time PCR, sequencing, gene expression – and to look at front-end sample preparation, and to be able to do the entire workflow process on chip,” he said.
Microchip hopes to start beta trials for its first product to automate sample prep for Sanger sequencing later this year. “Normally this has been done manually in thermal cyclers, but we’re going to be able to do it on chip, and once we finish the cycle sequencing, we’re also going to clean up that sample, which again has been done manually in laboratories,” Kopjak said. “The end product that comes off of that chip will be placed in microtiter plates, which will then be ready for injection onto something like [Applied Biosystems] sequencers.”
Kopjak added that Microchip will likely conduct additional research in collaboration with Jed Harrison moving forward, though he declined to elaborate. He also said that Microchip expects to announce additional in-licensing deals for microfluidics-based technologies in the coming months to continue to strengthen its patent portfolio.
TEC Edmonton’s Adachi said that the deal with Microchip is “average sized,” and was a standard mixed deal with upfront fees, milestones, and royalties. “That’s the usual approach we take to spread the risk and minimize damages when things don’t work out,” he said.
Adachi told BTW that the life sciences, including health sciences and agriculture, comprise about 60 percent of TEC Edmonton’s licensing activity. The University of Alberta has spun out approximately 80 companies – 71 of which are active – in the last 12 years, and about 60 percent of those also play in the life sciences arena.
In addition, the University of Alberta currently averages 20 to 25 licenses per year; and since 1994 has brought in about CAN $31 million ($29.4 million) in royalty revenue and created close to a CAN $40 million equity portfolio for the university.
Adachi said that the largest licensing deals that TEC Edmonton has executed have tended to be in the pharmaceutical space, most notably an arrangement with Canadian pharma BioMS for a multiple sclerosis treatment developed at the University of Alberta.
The most important aspect of the Microchip deal to TEC Edmonton is that the IP actually finds use as part of a commercial platform, he added.
Adachi also said that he wasn’t aware of any continued sponsored research agreements with Microchip Biotechnologies, but he thinks the company “has its door open if in the future there is an interest or need in collaborating.”

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