San Diego-based molecular diagnostics companies Illumina Inc and Sequenom Inc recently announced they have agreed to settle all pending infringement claims and other disputes between Sequenom and Illumina subsidiary Verinata Health Inc. The parties will pool their owned and in-licensed intellectual property directed to noninvasive prenatal testing (NIPT), including patents that will remain the subject of ongoing interference proceedings.
Under the agreement, Illumina will have exclusive worldwide rights to utilize the pooled intellectual property to develop and sell in vitro diagnostic kits for NIPT and to license third-party laboratories wishing to develop and sell their own laboratory-developed NIPT tests under the collection of pooled patents. In addition, Sequenom and Illumina will each have rights to utilize all pooled patents to develop and sell their own respective laboratory-developed NIPT tests. The parties will share the revenue from the patent pool, and Illumina will pay Sequenom a royalty on sales of in vitro diagnostic kits for NIPT.
Illumina will make a $50 million upfront payment to Sequenom as part of the overall agreement, as well as certain ongoing commitments for payments to Sequenom from the patent pool structure through 2020.
“The patent pool established through this agreement eliminates confusion over intellectual property rights and provides a single point of contact for those wishing to license this intellectual property for NIPT testing,” says Jay Flatley, Illumina CEO.
“This settlement will allow for easier access to both parties’ NIPT technology by healthcare providers and their patients,” say Bill Welch, Sequenom CEO. “We believe that pooling our intellectual property will enable us to continue to expand our NIPT laboratory test offerings while allowing Sequenom to participate more broadly in the growing global NIPT marketplace.”
Separately, Illumina and Sequenom entered into an amended supply agreement whereby Illumina agreed to supply Sequenom with instruments and reagents for an additional 5 years.
“Sequenom and Illumina will now be able to utilize all of their pioneering intellectual property in the NIPT testing field in order to enable and deliver the highest quality NIPT tests to benefit physicians and their patients,” says Tristan Orpin, senior vice president and general manager of reproductive and genetic health for Illumina.
Illumina is a global leader in sequencing and array-based technologies, enabling the adoption of genomic solutions in research and clinical settings. Sequenom is a life sciences company that develops innovative technologies, products, and diagnostic tests that target and serve molecular diagnostic markets. For further information, visit Illumina and Sequenom.