Industry Buzz: Sequenom Obtains Prenatal Testing Rights From Development Partner

Sequenom, the San Diego-based genomic laboratory, has purchased intellectual property rights from Oxford University regarding certain aspects of noninvasive prenatal testing. Sequenom paid $14.6 million to Isis Innovation Limited, an Oxford-affiliated development company, for the rights to the information. That sum includes $3.2 million as a final royalty payment under a prior agreement between the two companies. Sequenom also agreed to waive $2.1 million in legal fees Isis was previously obligated to pay. The property includes a portfolio of patents in the United States, Europe, Japan, Hong Kong, Canada, and Australia. Sequenom said they cover noninvasive prenatal genetic diagnostic testing on paternally inherited fetal nucleic acids derived from maternal plasma or serum. The technology is part of the firm’s MaterniT21 PLUS diagnostic test. Sequenom previously had exclusive rights to the property as part of a licensing agreement it had entered into with Isis Innovation in 2005 but did not own them outright. “The patents purchased from Isis Innovation will enable us to strengthen our intellectual property position worldwide, while reducing future expenditures,” said William Welch, Sequenom’s chief executive officer. “We look forward to leveraging this important intellectual property for additional applications of our technology in the future.” However, the U.S. version of the patent is currently under dispute, stemming from a legal battle involving Sequenom and San Jose, Calif.-based Ariosa Diagnostics. Ariosa sued Sequenom in 2011 to obtain a declaratory judgment that its own Harmony prenatal test did not infringe on Sequenom’s patent. A U.S. District Court in Northern California ruled last year that certain claims of the patent cannot be held by Sequenom and decided in favor of Ariosa. That judgment is currently under appeal, and Sequenom also received favorable judgments on seven claims of its patent from the U.S. Patent Trial and Appeal Board. The patent is not in dispute on other continents. In addition to those payments and waivers, Sequenom may also make future payments to Isis if revenues derived from the intellectual properties exceed certain thresholds. Takeaway: Sequenom is moving forward in locking up all the rights to the technology underlying its primary prenatal laboratory test.