This story has been updated to include comments from 10x Genomics.
NEW YORK – Parse Biosciences and 10x Genomics said this week that they have reached an agreement on patents held by 10x covering the ATAC-seq (assay for transposase-accessible chromatin by sequencing) technology.
The agreement "resulted in the judge canceling the March trial, no royalty payments to be enforced upon Parse, and Parse can continue with development and planned release of its chromatin product," Parse VP of Marketing Kaitie Kramer said in an email.
According to Kramer, the relevant patents in the agreement were US Patent Nos. 10,150,995, 10,619,207, and 10,738,357, all titled "Transposition of native chromatin for personal epigenomics," noting that they "were not asserted against any of Parse's actual products or future products."
In a separate statement, 10x said that "Parse agreed — a week before trial was to start — to a worldwide permanent injunction that prevents it from making, using, selling, or offering for sale its planned ATAC and ATAC-Multiome Single Cell products."
10x also said that as part of the agreement, "Parse admitted that 10x's ATAC-seq patents are valid, enforceable, and infringed by Parse's use of ATAC-seq methods and compositions."
"Parse previously advertised that it was planning on launching ATAC based products. As part of our litigation with them, they admitted that such a family of products would infringe 10x's patents, agreed they will not develop such products, and paid 10x as a result," Eric Whitaker, 10x's Chief Legal Officer, said in an email.
"Parse has never developed an ATAC-seq product, nor have we planned an ATAC-seq product," Kramer said. "As a result of this settlement, we have agreed not to develop ATAC-seq as a product, which is a very different method from our new innovative approach to chromatin accessibility. Our new approach is completely different from ATAC-seq."
The agreement between 10x and Parse on the ATAC-seq patents comes after the US Patent Trial and Appeal Board previously ruled three other patents 10x has asserted against Parse's products — US Patent Nos. 10,155,981, 10,697,013, 10,240,197 — invalid and their claims unpatentable.
In 2022, 10x sued Parse for patent infringement, alleging Parse's Evercode WT product infringed the '981, '697, and '197 patents and Parse's planned single-cell chromatin assay will infringe the '995, '207, and '357 patents.
"We're very happy with the outcome, as we're now able to continue to innovate without any further hindrance," Kramer said.