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10x Genomics to Pay $25M, Cross-License Patents to End BD Infringement Suit

NEW YORK – 10x Genomics and Becton Dickinson have settled a patent infringement lawsuit and entered into a patent cross-licensing agreement.

According to documents filed with the US Securities and Exchange Commission, the agreement states that 10x and BD and its affiliates, including subsidiary Cellular Research, have granted each other "a worldwide, royalty-free, non-exclusive, fully paid-up license to certain patents and patent applications relating to molecular barcoding and single cell analysis, including to all the patents asserted in the litigation." Additionally, 10x will pay BD $25 million over four years, or $6.25 million per year, beginning in January 2020.

The firms have also entered into a "covenant not to sue in certain fields related to each company's products" and agreed "to refrain from challenging the patents and patent applications licensed under the agreement."

The suit, originally filed by BD and Cellular Research in November 2018 in the US District Court for the District of Delaware, was dismissed Monday, with prejudice, by Judge Richard Andrews.

BD had alleged patent infringement of 11 patents related to molecular labelling and single-cell analysis, acquired when it bought Cellular Research in 2015. In September, 10x countersued, alleging patent infringement by BD and Cellular Research.

The agreement, "resolved all currently outstanding patent litigation between the parties," 10x said in a Form 8-K filed today with the SEC. According to the dismissal order, each party will bear its own costs, expenses, and attorneys' fees.

The settlement ends just one of 10x's legal battles. The Pleasanton, California-based firm is still involved in a multi-front patent fight with Bio-Rad Laboratories. It has also sued Celsee for patent infringement.

In after hours trading on the Nasdaq, shares of 10x were up 3 percent at $55.

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