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Judge Denies Oxford Nanopore's Request to Partially Dismiss PacBio Patent Lawsuit

This article has been updated with additional information from Pacific Biosciences.

NEW YORK (GenomeWeb) – Pacific Biosciences said yesterday that a judge has dismissed a motion by Oxford Nanopore Technologies to partially dismiss a patent infringement lawsuit PacBio brought against it last year.

Last September, PacBio filed a suit in the US District Court for the District of Delaware, claiming that Oxford Nanopore infringed two of its patents: US Patent No. 9,678,056, "Control of Enzyme Translocation in Nanopore Sequencing," which relates to using an enzyme to manage the speed of DNA moving through a pore; and US Patent No. 9,738,929, "Nucleic Acid Sequence Analysis," which covers obtaining a consensus sequence by analyzing the two complementary strands of a DNA molecule.

Oxford Nanopore had filed a motion in December to dismiss the complaint relating to the '929 patent, alleging that the patent's claims "are not directed to patent-eligible subject matter," according to the ruling. Following a hearing last month, a judge denied the motion yesterday. According to PacBio, the judge "also took note of the inconsistent statements made by ONT in front of the US International Trade Commission and in prosecuting ONT's own, later-filed patent applications."

In a statement, PacBio CEO Michael Hunkapiller said the firm was "pleased with the Court's decision to deny ONT's motion to dismiss. We believe that the patents we have asserted against ONT cover important inventions that ONT has misappropriated, and we look forward to the next phases in this litigation."

Oxford Nanopore CEO Gordon Sanghera, in a statement, called PacBio's statement a "bizarrely desperate fig-leaf announcement over a procedural legal prelude to the main court case, where we maintain, PacBio's case is without merit," adding that "we continue to compete by innovating."

PacBio has a separate ongoing lawsuit against Oxford Nanopore, filed a year ago in the US District Court for the District of Delaware, in which it claimed that the company infringed its US Patent No. 9,546,400, "Nanopore sequencing using n-mers," which relates to measuring signals from three or more bases inside a nanopore at a time. Last November, a judge denied a motion by Oxford Nanopore to dismiss that suit. PacBio said that a trial for this suit, as well as for the complaint about the '056 patent, is scheduled for early 2020.

In addition, PacBio filed a suit against Oxford Nanopore and its subsidiary Metrichor in the UK last year, with the High Court of England and Wales, claiming that they infringe its European Patent 3045542, "Methods for nucleic acid sequencing." A month later, Oxford Nanopore filed a counterclaim, denying infringement and asking for a declaration that the patent is invalid. PacBio added an infringement claim for a newly granted patent, European Patent 3170904, "Compositions and methods for nucleic acid sequencing," in the summer. In December, Oxford Nanopore requested that its 1D2 product be declared non-infringing, and PacBio responded in January by asserting that the 1D2 product infringes both patents. A trial for this case is scheduled for May of this year.    

Oxford Nanopore has also accused PacBio of infringing its intellectual property. Last April, the company filed two patent lawsuits against PacBio, one in the UK and the other in Germany, claiming that PacBio infringes European Patent 1192453, "Molecular and atomic scale evaluation of biopolymers," which it licenses exclusively from Harvard University.

PacBio filed its defense to the German suit in November, along with a separate nullity action to establish that the patent in question is invalid. It also filed a cross-complaint with the German court in December, alleging that Oxford Nanopore infringes PacBio's European Patent 3045542 in Germany. A trial for the German case and cross-complaint is set for July 27 of this year, and a trial for Oxford Nanopore's UK case is scheduled for March 2019.

In addition, PacBio complained to the US International Trade Commission in 2016, claiming that Oxford Nanopore infringed two other patents it holds, US Patent No. 9,404,146, "Compositions and methods for nucleic acid sequencing," which covers single-molecule sequencing using linked double-stranded DNA templates, and US Patent No. 9,542,527, "Compositions and methods for nucleic acid sequencing," a continuation of the '146 patent.

Earlier this year, the US ITC determined that Oxford Nanopore's products do not infringe those patents and terminated the investigation. PacBio, which believes the decision was based on an incorrect claim construction, filed a petition to appeal the US ITC's ruling with the US Court of Appeals for the Federal Circuit last month.