NEW YORK (GenomeWeb) – The Regents of the University of California have filed a lawsuit against Roger Chen, chief technical officer at Genia Technologies, and Genia, claiming that patents assigned to Genia were based on technology that Chen developed while he was a research employee at the University of California, Santa Cruz.
In the suit, which was filed this week with the US District Court of the Northern District of California, the university asked that UCSC be declared the owner of the patents, and for Genia and Chen to relinquish funds from the firm's acquisition by Roche that are attributable to its patents.
According to the suit, Chen broke an oath he signed with the university to assign inventions and patents that he developed while employed by the university to UCSC. The university alleges that Chen instead left his position at UCSC and cofounded Genia, whose "business model is directly related to the UCSC inventions."
The university claims that while at UCSC Chen's research focused on nanopore sequencing, and that he along with others developed technology that became the basis of patent applications filed by the university. However, when Chen left the university in 2008 and cofounded Genia, he was awarded patents for technology developed while he was at UCSC, but those patents were assigned to Genia and not the university, according to the suit.
In the suit, the university notes four patents and one patent application assigned to Genia that it claims should be assigned to UCSC: US Patent Nos., 8,324,914; 8,461,854; 9,041,420; and 9,377,437; and US Patent Application 15/079,322. The patents and patent applications all relate to nanopore sequencing and specifically to methods of trapping a molecule in a nanopore and characterizing it based on the electrical stimulus required to move the molecule through the pore.
Genia was founded in 2009, and in 2014, Roche acquired the startup for $125 million in cash and up to $225 million in milestone payments. Earlier this year, the company published a proof-of-principle study of its technology in the Proceedings of the National Academy of Sciences.
Although Roche has not said when it plans to commercialize the Genia technology, earlier this month, it ended a clinical sequencing development agreement with Pacific Biosciences and said it planned to focus on developing the Genia technology for clinical use. At the time, Roche's head of sequencing solutions, Neil Gunn, said that Roche would announce a commercialization timeline in 2017.
It's unclear how the lawsuit will impact that commercialization, but Mick Watson, director of ARK-Genomics at the Roslin Institute in the UK, speculated in a blog post that if the suit is decided in favor of UCSC, it could result in a very large settlement and potentially even the end of Genia.