NEW YORK – A US District Court judge has allowed parts of Vizgen's countersuit against Harvard University to proceed to trial, including allegations that the university's Office of Technology Development (OTD) acted in bad faith regarding separate licenses of spatial transcriptomics technology to Vizgen and former Harvard spinout ReadCoor. The trial is set to start on Feb. 3.
In an order issued Jan. 3, Delaware District Court Judge Matthew Kennelly denied Harvard's motion for summary judgment on Vizgen's countersuit, filed by the firm in 2023 in response to a patent infringement case brought by 10x and Harvard against Vizgen in 2022.
As a result of last week's order, Vizgen will have the opportunity to convince a jury that Harvard's OTD set Vizgen up to be sued by fellow spinout ReadCoor, which was in the process of being acquired by 10x.
Vizgen has alleged that in 2020, Harvard renegotiated the scope of its license with ReadCoor to expand the field of use for technologies invented in George Church's lab. This was prior to ReadCoor's acquisition by 10x for $350 million, announced in October of 2020, and allegedly a condition of that deal.
Vizgen had in 2019 secured an exclusive license to spatial transcriptomics technology developed in Xiaowei Zhuang's lab, also at Harvard.
"There is evidence … that would permit a finding that when Harvard agreed to expand ReadCoor's field of use in 2020 — an expansion that connects, with a direct line, to 10x and Harvard's filing of the present patent infringement lawsuit — it knew or at least was on notice that the field-of-use expansion would put Vizgen on a collision course with ReadCoor," Kennelly wrote. Harvard allegedly realized the expanded license would lead to conflict and "initially sought to prevent a lawsuit by seeking a covenant by ReadCoor not to sue," Kennelly wrote; however, "it folded on that point when ReadCoor objected, and did so at least arguably based on ReadCoor's dangling of a significant financial reward."
In a letter to customers sent Monday and shared with GenomeWeb, Vizgen CEO Rob Carson noted that this was just one of several issues to be determined at trial. Vizgen has also argued that it should have been able to license the Church lab patents, based on language used in grant proposals submitted to the National Institutes of Health, which funded research that led to the technologies.
Kennelly also allowed some of Vizgen's allegations of improper pricing by 10x to go to trial. Last year, he allowed Vizgen to expand its antitrust allegations against 10x.
According to 10x, the order also dismissed Vizgen's antitrust claims against the firm and denied attempts to invalidate 10x's patents.
"We are very pleased with the court's decision to dismiss all the antitrust claims against 10x," Eric Whitaker, 10x's chief legal officer, said in a statement. "We are also pleased that the court denied Vizgen's attempt to invalidate our patents. We will now move forward with presenting our patent case to the jury, as we continue to focus on safeguarding the important intellectual property that underpins innovation in the emerging in situ field."
A Harvard spokesperson declined to comment on the order or its license renegotiations with ReadCoor.