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Bio-Rad, 10x Genomics settle genomics patent war

3 minute read

REUTERS/Lim Huey Teng

  • Settlement ends long-running, multi-front dispute over genetic-analysis tech
  • Parties agree to cross-license patents

(Reuters) - Rivals Bio-Rad Laboratories Inc and 10x Genomics Inc have settled their multi-front battle over microfluidic genetic analysis technology, 10x announced Tuesday.

The company said in a statement that the parties have agreed to resolve all outstanding litigation worldwide and to cross-license their single-cell analysis patents.

The litigation includes more than 20 separate disputes brought by both companies in venues including California, Delaware, and Massachusetts federal courts, German tribunals, and the Patent Trial and Appeal Board and U.S. International Trade Commission, according to a copy of the settlement filed with the U.S. Securities and Exchange Commission dated Monday.

The agreement says both parties will pay undisclosed amounts to settle the court cases and license each other's technology. The companies filed a joint stipulation in Delaware federal court that noted the settlement, in a case in which Bio-Rad had previously won a $24 million jury verdict against 10x.

A trial in another Delaware case brought by 10x against Bio-Rad subsidiary Celsee Inc had been scheduled to start next Monday, and a Massachusetts jury trial in a case brought by Bio-Rad against 10x had recently been scheduled for Sept. 7.

"We always had conviction that we were on the right path and that has been underscored today," 10x general counsel Eric Whitaker said in a Tuesday statement. "Today is a victory for science and the thousands of researchers that 10x is empowering to push the boundaries of biology to advance human health."

Hercules, California-based Bio-Rad's President and CEO Norman Schwartz said in a Tuesday press release that the company was "pleased to put an end to the worldwide litigations," and that the settlement serves "as a validation of the importance and value of Bio-Rad's intellectual property rights."

Pleasanton, California-based 10x was founded by former Bio-Rad employees in 2012. Bio-Rad first brought claims against 10x in 2014 at the American Arbitration Association, alleging 10x's founders breached non-competition and confidentiality agreements with their former company. The arbitrator ruled for 10x in 2015.

Since then, the companies have sued each other in several venues over patented technology to isolate individual cells for genetic analysis on microscopic droplets.

The companies, both leaders in the genomics field, received mixed rulings at the U.S. Court of Appeals for the Federal Circuit earlier this year in appeals of International Trade Commission decisions, which included determinations in cases brought by both parties that they infringed each other's patents.

A Delaware jury awarded Bio-Rad and the University of Chicago $24 million in 2018, finding 10x's GEM droplet technology infringed three of their patents. That damages award was affirmed by the Federal Circuit last year, and the parties later agreed for 10x to pay more than $35 million to satisfy the judgment.

10x's Tuesday SEC filing related to the global settlement says the company also agreed to pay Bio-Rad over $29 million in royalties and interest related to sales of GEM products from the date of the verdict through March 2021.

The Delaware case is: Bio-Rad Laboratories Inc v. 10x Genomics Inc, U.S. District Court for the District of Delaware, No. 1:15-cv-00152.

For Bio-Rad: Brian Farnan of Farnan Law

For 10x: Alexandra Ewing of Richards, Layton & Finger

Read more:

Bio-Rad brings patent case against upstart rival 10X Genomics

Federal Circuit affirms Bio-Rad infringed rival 10x Genomics' patents

Fed Circ affirms mixed ITC ruling in 10x and Bio-Rad's patent fight

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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