Pacific Biosciences of California Inc. v. Oxford Nanopore Technologies Inc


Baker Botts LLP secured a favorable jury verdict for UK-based Oxford Nanopore Technologies Ltd., developer of a DNA analysis tool used in 100 countries for a range of scientific applications including viral/bacterial outbreak surveillance, cancer research and human genetics, in a landmark patent infringement case.

This significant competitor case, in the U.S. District Court for the District of Delaware, involved two of the leading companies in the sequencing technology space. The jury invalidated all four patents asserted by PacBio.

PacBio argued that Oxford’s DNA sequencing systems infringed one PacBio patent. That complaint was later combined with infringement suits involving three other patents. PacBio sought royalties and financial losses on sales from Oxford Nanopore.

The proprietary technology involves sending strands of DNA as long as 2 million lases long through tiny holes in proteins seated in an insulating membrane. Changes in the conductivity of the pore as the strand moves through the protein pore identify the sequence of DNA bases.

Oxford Nanopore’s flagship product, the MinION, weighs approximately two ounces, whereas PacBio’s product weighs 800 pounds. In addition, Oxford Nanopore’s technology allows less hardware-intensive identification of longer, continuous strands of DNA, at a lower cost, available for analysis in real-time.

Last year, the International Trade Commission ruled in favor of Oxford Nanopore in a related case, affirming summary determination of noninfringement by Oxford Nanopore’s nanopore sequencing technology, in a dispute that involved different patents. The Federal Circuit affirmed that ruling on appeal.

Oxford is represented by Baker Botts partners Stephen Hash (Picture), Elizabeth Durham Flannery; David Weaver, Michael Hawe, and David Wille; senior associates Puneet Kohli, Jeff Gritton and Mysha Lubke; and associates Samoneh Kadivar, David Varghese and Alex Piala.

Involved fees earner: Elizabeth Durham Flannery – Baker Botts; Jeff Gritton – Baker Botts; Stephen Hash – Baker Botts; Michael Hawes – Baker Botts; Samoneh Kadivar – Baker Botts; Puneet Kohli – Baker Botts; Mysha Lubke – Baker Botts; Alex Piala – Baker Botts; David Varghese – Baker Botts; David Weaver – Baker Botts; David Wille – Baker Botts;

Law Firms: Baker Botts;

Clients: Oxford Nanopore Technologies Limited;