Illumina sues Oxford Nanopore for infringing next generation sequencing patents

Illumina, which dominates the next-generation sequencing (NGS) market, is suing its much smaller technology rival, Oxford Nanopore Technologies, for willful patent infringement. Filed with the U.S. International Trade Commission and U.S. District Court for the Southern District of California, the lawsuits relate to two patents on methods for making and using Mycobacterium smegmatis porin (MSP) nanopores.

Illumina practices chip-based sequencing by synthesis. In the filing, the firm describes how the MSP technology solves a problem that had prevented newer nanopore-based sequencing from progressing. These pore-forming proteins have the right characteristics to allow DNA to pass into the pores in a way that generates current fluctuations correlated to the identity of each individual DNA base.

Illumina exclusively licensed the patents for use in nucleic acid sequencing from its co-plaintiffs, the University of Alabama at Birmingham Research Foundation and the University of Washington. Illumina alleges that Oxford Nanopore infringes the patents by using MSP nanopores in its MinION and PromethION devices and by making the devices available in the U.S.

In response, Oxford CEO Gordon Sanghera says, “It is gratifying to have the commercial relevance of Oxford Nanopore products so publicly acknowledged by the market monopolist for NGS.” Calling Illumina’s action “without merit,” Sanghera says he doesn’t anticipate that it will disrupt his firm’s commercial progress.

Oxford Nanopore was founded in 2005 around science developed in the lab of Oxford University chemistry professor Hagan Bayley. On its website, the company highlights its own portfolio of more than 300 patents and applications amassed from in-house work and licensing agreements.

According to Illumina, Oxford Nanopore has patent applications filed after the ones in dispute that relate to MSP nanopores. Illumina also states that Oxford Nanopore was well aware of the disputed technology and the patents, since it both contacted the inventors and petitioned the U. S. Patent Office for a review of the validity of at least one of the patents.

In late 2013, the same year that Illumina licensed the MPS nanopore technology, it sold its 13.5% stake in Oxford Nanopore. Illumina is seeking a jury trial, an injunction against its rival, and all possible damages to protect its investment and rights to the MPS technology.