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Taiwanese Firm Sues Pacific Biosciences for Patent Infringement

NEW YORK – Taiwan's Personal Genomics has sued Pacific Biosciences for patent infringement in a US federal court.

According to the complaint, filed yesterday in the US District Court for the District of Delaware, Personal Genomics alleged that PacBio's Sequel and Sequel II sequencing systems infringe US Patent No. 7,767,441, "Bioassay system including optical detection apparatuses, and method for detecting biomolecules." Personal Genomics said it exclusively licensed the technology described by the patent from Taiwan's Industrial Technology Research Institute (ITRI) in 2010.

"We believe that the claims by Personal Genomics are without merit, and we will vigorously defend against the claims asserted in the complaint," PacBio told GenomeWeb through a spokesperson. The company did not address whether it had tried to license the intellecual property.

Personal Genomics, a spinout from ITRI founded in 2010, is developing a single-molecule optoelectronic sequencing instrument. Recently, researchers from the firm published a paper, in collaboration with the Taiwan Academia Sinica's Institute of Biological Chemistry, on a new sequencing-by-synthesis chemistry for such an instrument. The firm is hoping to compete with Illumina's short-read sequencing platform as well as single-molecule sequencers from PacBio and Oxford Nanopore Technologies.

PacBio has marketed the Sequel sequencing platform since 2015. The firm is in the process of being acquired by Illumina, although the deal has been delayed as regulators in the UK review the effects the deal might have on competition in the sequencing market. Illumina did not immediately respond to a request for comment. Earlier this week, PacBio announced it would be receiving cash payments from Illumina to stay afloat.

Personal Genomics alleged that PacBio knew about the '441 patent because between March 2010 and June 2015, PacBio had been in talks to license the technology, either from ITRI or Personal Genomics. Personal Genomics said it has operated under different English-language names, including Crackerbio Taiwan and Ti-Shieu Biotech, but that "the Chinese name of this entity remained unchanged." Personal Genomics alleged that the firms had signed non-disclosure agreements and that in 2011 it had "presented to PacBio updates on [Personal Genomics] technology and the parties discussed a possible collaboration," followed by meetings, draft memoranda of understanding, a proposed term sheet to license the technology, and a possible supply agreement.

Allegedly, PacBio suspended negotiations in December 2011, but two years later "again contacted [Personal Genomics] regarding a potential non-exclusive worldwide license" and sent another proposed term sheet to license the '441 patent in 2014, before dropping all contact in June 2015.

Personal Genomics alleged that PacBio has willfully infringed the '441 patent and asked the court for a jury trial, a judgment of infringement, monetary damages including interest, and costs and attorneys' fees. It also asked for an injunction or, if PacBio is not enjoined, ongoing royalties for post-judgment infringement.