Genome Compiler Corp. (GCC) has agreed to license a patent that covers the technology underlying DNA2.0's Gene Designer software, putting an end to a patent infringement lawsuit between the companies.
Under the terms of the licensing agreement, GCC has the right to incorporate DNA2.0's patented technology — a method encapsulated in the free Gene Designer tool for designing custom gene sequences — into its Genome Compiler software product. DNA2.0 for its part plans to keep offering Gene Designer free of charge — the company has other products in its portfolio that require licenses or payment — to professional scientists, researchers, and students, according to Jeremy Minshull, DNA2.0 co-founder and CEO.
Further details of the agreement are not being disclosed by the firms.
In separate statements issued this week, both Minshull and Omri Amirav-Drory, GCC's founder and CEO, described the agreement as a beneficial one for their respective businesses and customers.
In an email to BioInform Amirav-Drory noted that the companies offer complementary products — "DNA2.0’s focus … is on fulfilling orders for genes and bioengineering services, while our focus is providing advanced tools for gene designers." He also believes that there is adequate room in the market for both businesses to thrive, even though one product is free and the other requires payment.
"OpenOffice is available for free download, yet most people are willing to pay for Microsoft Office," he said. "Customers will pay for a better tool, especially if it makes them more productive. The return from a good tool far surpasses its acquisition cost." He also told BioInform that GCC has incorporated a link into its system that allows its customers to place orders with DNA2.0.
DNA2.0 first filed suit against GCC in late 2012 alleging that the latter's software infringes claims listed in US Patent 7,805,252 — awarded to the company in September 2012 — which protects DNA2.0's method of designing and ordering gene sequences through a drag-and-drop interface. In its suit, it asked the court to prevent GCC from engaging in activities that it believed infringed the patent, to compel the company to turn over the offending software and code, and it sought compensation for damages.
GCC denied the accusation, and last December it filed a request for reexamination with the US Patent and Trademark Office, in which it questioned the originality of the claims in the DNA2.0 patent. Although legal proceedings between the two companies have now been put to bed, their decision has no bearing on the reexamination request, which will still have to make its way through UPSTO channels.
"Filing the reexam was part of our defense strategy to the lawsuit; however, we always believed that it would have been better to find a business arrangement," Amirav-Drory said. "Waiting for the reexam results would have taken two years – during which time both companies would have spent unnecessary resources on their legal teams." Instead, with this settlement, "we can now direct those resources to better serve our customers," he said.