NEW YORK – A jury has determined that four patents held by Pacific Biosciences covering nanopore sequencing technology are invalid, while also finding that Oxford Nanopore Technologies had infringed those patents.
In a verdict read in the US District Court for the District of Delaware on Wednesday, the jury determined that certain claims of three of the patents were invalid, due to lack of enablement, meaning someone "skilled in the art" would not have been able to make or use the invention. Claims from another patent were found to be invalid because the subject matter would have been obvious to a person skilled in the art, the jury said.
The jury also found that UK-based Oxford Nanopore had directly infringed three patents and induced or contributed to infringement of those patents. The firm did not infringe the fourth patent, the jury said, and it didn't award PacBio any damages.
"We are pleased that the jury recognized that it is Oxford Nanopore, with the help of our collaborators across the globe and as part of the nanopore community of users, who are the true innovators in the field of nanopore sequencing," CEO Gordon Sanghera said in a statement. "This was the latest in a long line of nefarious attempts to exclude Oxford Nanopore from the market … We will continue to fight attempts to 'tangle up' our innovation."
"We are disappointed with today's verdict, which appears to be internally inconsistent regarding the validity of our patents," PacBio President and CEO Michael Hunkapiller said in a statement. "We continue to believe that all of our asserted US patent claims are valid and infringed by Oxford Nanopore, and we believe the law and the facts support our positions."
PacBio said it intends to file post-trial motions with the Delaware District Court to overturn aspects of the jury verdict and may even request a new trial. Additionally, it plans to appeal to the US Court of Appeals for the Federal Circuit.
Hunkapiller also alleged in his statement that Oxford Nanopore made a "brazen attempt … to improperly sway the jury" by suggesting a verdict of infringement would inhibit response to COVID-19 and accused the defendant of "profit[ing] from the current coronavirus pandemic."
Oxford Nanopore, responding to the allegation, said in a statement that "during approximately 30 hours of testimony, the current epidemiology work in the COVID-19 outbreak was mentioned once, for approximately two minutes, in the first hour" and that "after objection from PacBio, the judge directed the jury to ignore the issue and focus on the patents."
PacBio filed suit against Oxford Nanopore in 2017, alleging infringement of its US Patent Number 9,546,400, "Nanopore sequencing using n-mers." The patent claims relate to detecting a nucleic acid as three or more bases pass through the nanopore at a time, then deconvoluting the signal to determine one specific base.
PacBio also filed a complaint with the US International Trade Commission in 2016, alleging that Oxford Nanopore was importing devices that infringed PacBio's US Patent Number 9,404,146, which was not at issue in this case. In 2018, the ITC said Oxford Nanopore's MinIon and PromethIon devices did not infringe the patent.
Oxford Nanopore in turn sued PacBio in 2017 in Germany and the UK over its European Patent 1192453, "Molecular and atomic scale evaluation of biopolymers." That suit, along with a PacBio suit filed in the UK the same year, was dropped as part of a settlement between the two rivals. Oxford Nanopore has also successfully challenged the validity of two PacBio patents before the European Patent Office; both patents were revoked in 2019.
PacBio said the new verdict has "no effect on the previous settlement between the parties, under which Oxford Nanopore has agreed to refrain from offering '2D' sequencing products in the UK and Germany through 2023."
Opening arguments in the trial began March 9. Besides the '400 patent, the case centered on US Patent Numbers 9,772,323, also titled "Nanopore sequencing using N-mers;" 9,678,056, "Control of enzyme translocation in nanopore sequencing;" and 9,738,929, "Nucleic acid sequence analysis." The jury reached its verdict in a day or less, given that the sides presented closing arguments Tuesday morning.
"During the trial, the jury heard evidence that PacBio had never performed nanopore sequencing, before or after they filed patents that allegedly cover nanopore sequencing," Oxford Nanopore said in a statement.
PacBio alleged that Oxford Nanopore's counsel violated instructions from the Court by referencing previous legal proceedings in its arguments and implying that a verdict in favor of PacBio would impede efforts to respond to the COVID-19 pandemic.
In a March 10 letter to Judge Leonard Stark, PacBio attorney Brian Farnan highlighted specific instances in which Oxford Nanopore mentioned the coronavirus outbreak during opening arguments. Farnan asked the court in the letter to provide further jury instructions, stating that jury members are not "being asked to exclude any [Oxford Nanopore] product from the market or to stop any research work being performed on [Oxford Nanopore] products."
PacBio confirmed the instructions were provided to the jurors before their deliberation.