NEW YORK – The US Patent Trial and Appeals Board (PTAB) has invalidated a patent held by 10x Genomics, dealing a blow to the firm's patent infringement lawsuit against single-cell sequencing competitor Parse Biosciences.
In a judgment issued Tuesday, the PTAB determined that all six claims of US Patent No. 10,155,981, "Methods for analyzing nucleic acids from single cells," were unpatentable. Parse had triggered an inter partes review of the patent after 10x used it to sue Parse in 2022. Parse successfully argued that a 2007 paper in Biochemical Genetics and a 2010 international patent filed by Illumina anticipated the claimed inventions.
In the judgment, the PTAB noted that the Illumina patent "was the basis of multiple rejections by the [US Patent and Trademark] Office in the application that matured into '981, as well as '981's parent." A US patent application based on the 2007 paper was also "raised by the Office and substantively discussed as the basis for a potential rejection."
"We are pleased by the PTAB decision to invalidate all the claims in this patent asserted by 10x against Parse," Alex Rosenberg, cofounder and CEO of Parse Biosciences, said in a statement. "Parse offers a fundamentally differentiated solution. … The recent decision prioritizes innovation and is a win for the research community."
"We disagree with the PTAB decision and plan to appeal," a 10x spokesperson said in an email.
The US Patent and Trademark Office awarded the '981 patent, which listed Nobel laureate Sydney Brenner among its inventors, to 10x in 2018. 10x has alleged that Parse's Evercode WT product also infringes its US Patent No. 10,697,013 and No. 10,240,197, also titled "Methods for analyzing nucleic acids from single cells," from the same set of inventors. The PTAB has instituted inter partes review of those patents, as well.
In a 2019 lawsuit, 10x alleged that Bio-Rad Laboratories subsidiary Celsee's products infringed the '981 patent. The firms settled all litigation and signed a global cross-licensing agreement in 2021.
In Wednesday afternoon trading on the Nasdaq, shares of 10x were up 6 percent at $22.65.