Oxford Nanopore Technologies’ DNA Sequencers Don’t Infringe

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By Dana A. Elfin

Oxford Nanopore Technologies’ imported DNA sequencers don’t infringe Pacific Biosciences of California’s patents, the International Trade Commission said Feb. 9.

British-based Oxford Nanopore is trying to disrupt the DNA sequencing market by introducing small, portable, and less expensive sequencers to the market to compete with players like Pacific Biosciences (PacBio) and San Diego-based Illumina, which dominates the market and sells much larger, more expensive sequencing instruments.

The fight over DNA sequencing instruments comes as researchers are increasingly looking to sequencers to uncover disease causes and potentially develop new and valuable diagnostic tests for diseases. The high-speed DNA sequencers market was worth approximately $3 billion in 2017, according to DeciBio, a consulting and analytics firm focused in the life sciences. The market is expected to grow to $4.6 billion in 2020, driven primarily by adoption in clinical settings, DeciBio said.

Oxford Nanopore Technologies Ltd. importation, sale for importation, and sale within the U.S. of its single-molecule nucleic acid sequencing systems didn’t violate Section 337 of the Tariff Act of 1930, the ITC said. Section 337, which is enforced by the ITC, bars the importation of products that infringe U.S. patent rights from the U.S. market, which can be a powerful enforcement option.

No Violations

Oxford didn’t violate Section 337 because the term “single-molecule sequencing” was limited to sequencing-by-synthesis approaches and Oxford Nanopore’s sequencing approach was not “single-molecule sequencing,” according to a press release by PacBio.

Oxford’s sequencer, known as the MinION, uses nanopores, small pores formed using various proteins, to read long sequences of DNA letters.

PacBio alleged Oxford’s sequencers infringed its U.S. Patent Nos. 9,404,146 (compositions and methods for nucleic acid sequencing); and 9,542,527 (compositions and methods for nucleic acid sequencing). It wanted the ITC to issue a permanent general exclusion order and permanent cease-and-desist orders against the company. The company also has sued Oxford in federal district court for patent infringement over its sequencers.

PacBio said it could appeal the ITC’s decision to the U.S. Court of Appeals for the Federal Circuit. Like PacBio, Illumina also has pursued suits against Oxford in the ITC and in federal district court, alleging Oxford’s DNA sequencing devices infringed its patents.

Baker Botts LLP represented Oxford, which is based in the U.K., with U.S. headquarters in Cambridge, Mass.

Weil Gotshal & Manges LLP represented Pacific Biosciences of California Inc., which is based in Menlo Park, Calif.

To contact the reporter on this story: Dana A. Elfin in Washington at delfin@bloomberglaw.com

To contact the editor responsible for this story: Brian Broderick at bbroderick@bloomberglaw.com

For More Information

The ITC's notice of determination is at http://src.bna.com/wlx.

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