This article has been updated with additional information from Bio-Rad.
NEW YORK – Bio-Rad Laboratories and 10x Genomics announced on Tuesday an agreement that will end their protracted legal battle over single-cell analysis patents and provide cross-licensing to each other's intellectual property in that realm.
Under the terms of the deal, dated July 26, the firms have granted each other a non-exclusive, worldwide, royalty-bearing license to develop products and services related to single-cell analysis. The agreement excludes products related to spatial analysis and in situ analysis and, for 10x, the agreement also excludes digital PCR products.
The agreement is for the life of the licensed patents, and the companies have agreed not to sue each other on licensed products or services on other patents owned or exclusively licensed by each company. They agreed that each company's patents are owned by that company. Bio-Rad has also granted 10x an option to license patents it holds through an agreement with Brandeis University.
10x will pay Bio-Rad an undisclosed fee "in partial consideration for settling" a lawsuit filed in 2019. Bio-Rad will similarly pay 10x an undisclosed fee for settling 10x's patent infringement lawsuit against Celsee, a single-cell genomics firm Bio-Rad acquired last year.
In addition, the companies will pay each other royalties through 2030. 10x appears to have lowered the total amount of royalties it will pay Bio-Rad for past sales of its older GEM chip technology; however, it will also pay Bio-Rad royalties on future revenues from its newer Next GEM products.
With the settlement, which calls for dismissal of 20 legal proceedings between the firms before federal courts, the US International Trade Commission, and the US Patent Office Patent Trial and Appeals Board, one of the bitterest legal battles in biotech should come to an end.
"We are pleased to put an end to the worldwide litigations in the license agreement between Bio-Rad and 10x Genomics," Bio-Rad President and CEO Norman Schwartz said in a statement. "This settlement and the resulting license agreements along with our other recent IP settlement serve as a validation of the importance and value of Bio-Rad's intellectual property rights," he added. Bio-Rad settled a lawsuit with Stilla Technologies over digital PCR IP earlier this month.
"Today's settlement underscores the value of our innovation and strong patent portfolios built over the last nine years," Eric Whitaker, general counsel of 10x, said in a statement. "10x has invested nearly $1 billion in research and development, which has led to more than 1,100 issued and pending patents and catalyzed a revolution in genomics around the world."
Hercules, California-based Bio-Rad scored the biggest victory, when it won $34.5 million in damages related to a 2018 jury verdict and a permanent injunction providing for royalty payments from 10x.10x said in a filing with the US Securities and Exchange Commission that those royalties and interest on them had totaled $44.8 million between Nov. 14, 2018, and March 31, 2021, but that under the new agreement, it will pay Bio-Rad $29.4 million in royalties and interest.
But Pleasanton, California-based 10x was able to land blows in other venues, such as in February 2020, when the US International Trade Commission upheld a finding that certain microfluidics products imported by Bio-Rad indirectly infringed patents held by 10x.
10x has now settled the major allegations of patent infringement against it. In October 2019, the firm paid Becton Dickinson $25 million and signed a global cross-licensing agreement to end litigation between them.
Bio-Rad and 10x did not immediately respond to a request for comment.