PacBio and Oxford Nanopore Settle European Patent Dispute
Pacific Biosciences of California and Oxford Nanopore Technologies has entered into a five-year patent infringement dispute in Europe.
Under the settlement agreement, Oxford Nanopore will refrain from offering its 2D sequencing products in the UK and Germany through the end of 2023. It should be noted that the 2D line of products were discontinued a year ago in favour of the superior 1D2 method. Oxford Nanopore will continue to sell 1D2 products as usual.
In addition, Oxford Nanopore has agreed to dismiss their countersuit in the UK and German actions against PacBio.
The settlement regards a lawsuit that PacBio filed against Oxford Nanopore in the UK last year, claiming that the company infringed on two patents it holds in Europe.
The first claim relates to Patent No. 9,678,056, which was issued in June. PacBio claim that their patent covers the use of an enzyme to control the speed at which DNA is passed through a nanopore and that Oxford Nanopore’s sequencers are utilising the same technology. Oxford Nanopore’s MinION and PromethION sequencers both work by monitoring ionic changes that take place when a single DNA strand is passed through a biological nanopore; enzymes are used to ensure that the fragment moves at the correct speed for the sequencer to take a reading.
The second claim covers Patent No. 9,738,929, which was issued in August. The patent refers to using sequencing information from two complementary strands to build a consensus sequence, something which Oxford Nanopore use for both 2D and the recently announced 1D2 sequencing. If Oxford Nanopore were forced to abandon this technique, then it could significantly set back the accuracy of their sequencers.
“From the beginning, our goal with the UK and German actions was to enforce and protect our intellectual property estate, specifically with regard to Oxford Nanopore’s 2D products, which utilize PacBio’s single molecule consensus sequencing technology, and which Oxford Nanopore discontinued soon after we initiated the litigation,” PacBio CEO Mike Hunkapiller said in a statement.
In light of the agreement to stop selling the already discontinued 2D products, Gordon Sanghera, CEO of Oxford Nanopore, said: “We do not infringe their patents and the settlement has no impact on our current business or on our future plans. It is reassuring that PacBio has not succeeded in its strategy to try to prevent us from selling our real-time, scalable, ultra-long read, direct sequencing technology. In the meantime, we’re busy innovating and our technology continues to improve rapidly. Tune in, in two weeks, when 600 people will gather for London Calling. The conference will feature talks from 80 researchers at the forefront of nanopore sequencing in microbiology, cancer research, plant genetics, human genetics, environmental analysis, food & water surveillance, and healthcare/diagnostics, across our technology range including MinION, GridION and PromethION.”
Oxford Nanopore have a long and colourful history with lawsuits, and with PacBio in particular. The strained relationship has been forming since late 2016, but Oxford Nanopore have been fielding patent disputes for much longer than that.