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Illumina and Oxford Nanopore Settle Patent Infringement Lawsuit

NEW YORK (GenomeWeb) – Illumina and Oxford Nanopore Technologies have settled their patent lawsuit, Oxford Nanopore said today.

According to consent orders filed in July and August with the US District Court for the Southern District of California and the International Trade Commission, the parties have reached a settlement that includes a final judgment and permanent injunction against defendant Oxford Nanopore and in favor of plaintiffs Illumina, the University of Washington, and the University of Alabama, Birmingham Research Foundation.

The lawsuit was filed in February with both the US court and ITC. In it, the plaintiffs alleged that Oxford Nanopore infringes two patents, US Patent No. 8,678,550 and No. 9,170,230, which Illumina exclusively licensed from the University of Washington and the UAB Research Foundation. Both patents are titled "Msp Nanopores and Related Methods."

The patents cover the use of a biological nanopore, Mycobacterium smegmatis porinA (MspA), for sequencing systems, and Illumina said at the time that the lawsuit pertained to both Oxford Nanopore's MinIon and PromethIon sequencing devices.

In March, however, Oxford Nanopore disclosed that a new nanopore it was planning to release later that month for its MinIon and PromethIon systems was based on the CsgG pore from Escherichia coli, which it licensed from VIB in Belgium and which is different from MspA.

According to the US district court document, as part of the settlement, Oxford Nanopore will not challenge the validity of most of the claims of the '550 and the '230 patents.

The company asserted that as of the date of the settlement order, it had stopped manufacturing, using, selling, or offering the MspA nanopore or products containing it in the US, and it is enjoined from doing so for the life of the patents.

Also, neither Oxford Nanopore nor the plaintiffs will appeal the decision of the US Patent and Trademark Office's Patent Trial and Appeals Board in two inter partes review proceedings, No. 2014-00513 and 2015-00057.

The plaintiffs may request no more than five audits of Oxford Nanopore's products to ensure the company is complying with the consent order. Such an audit can be requested no more than once per year and the cost of it will be borne by the plaintiffs. It will be conducted by an independent third party that is mutually agreed between Oxford Nanopore and the plaintiffs. The auditor will need to sign an agreement with Oxford Nanopore that will prohibit it from disclosing confidential information to the plaintiffs. The audit procedure will remain in place for the next ten years or until the patents expire, whichever is earlier.

Both parties agreed to waive their rights to appeal the consent order.

Oxford Nanopore Technologies, through a spokesperson, declined to comment on the settlement. Illumina did not respond to a request for comment before press time.

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