IP Law Daily, PATENT—D. Del.: Trial required to decide DNA analysis patent suit brought by Stanford University and 10x Genomics against Parse Biosciences, (Feb 13, 2025)

By Kevin M. Finson, J.D.

The issue of validity of certain patent claims relating to DNA analysis would proceed to trial because the parties’ conflicting expert testimony showed a question of fact existed as to whether several patent specifications and their associated claims described the same or different inventions.

A biosciences company was not entitled to summary judgment in patent infringement claims asserted against it, the U.S. District Court in Wilmington has held. Genuine questions of material fact existed as to the use of patented methods by the defendant and how the specifications and claims would be understood by a person skilled in the art (10x Genomics, Inc. v. Parse Biosciences, Inc., No. 1:22-cv-01117-JHS (D. Del. Feb. 12, 2025)).

10x Genomics, Inc. and the Board of Trustees of the Leland Stanford Junior University (collectively, 10x), were the owners of two groups of three patents each at issue in this matter: U.S. Patents Nos. 10,150,995 (the ’995 patent); 10,619,207 (the ’207 patent); and 10,738,357 (the ’357 patent) (collectively, the Giresi Patents) were directed to determining epigenetic features of cells, while U.S. Patents Nos. 10,155,981 (the ’981 patent); 10,697,013 (the ’013 patent); and 10,240,197 (the ’197 patent) (collectively, the Brenner Patents) were directed to a composition and methods to differentiate between polynucleotides such as DNA within large populations of cells.

10x brought suit for infringement of all six patents against Parse Biosciences, Inc., (Parse) a biosciences company. In September 2023, the court rejected Parse’s argument that the patents were invalid as directed either to unpatentable natural phenomena of behavior of genetic components or the abstract idea of “tagging polynucleotides.” Currently before the court was Parses’ motion for summary judgment as to the Giresi patents on the ground that there was no evidence it directly infringed or indirectly infringed those patents, and also moved for summary judgment as to the Brenner patents on the ground of invalidity because the specifications and claims described different methods.

Giresi patents. 10x argued that direct infringement was shown by the testimony of Parse’s own employees who indicated that data from a certain poster was generated with an insertional enzyme covered by the Giresi patents.

The court found a genuine dispute of material fact existed on this point because the testimony did not conclusively show use or non-use of the patented enzyme, but rather showed uncertainty. The witnesses would need to review other material in order to be sure. As to induced and contributory infringement, the court found there was a dispute of fact as to whether materials provided by Parse in connection with its products showed an intent for future infringement or taught an infringing method to users of the products.

Brenner patents. Parse argued that the specifications of the Brenner patents described what it called the “reflex” method for differentiating polynucleotides, while the claims described the “dual tagging” method, and that the dual tagging method was not what the inventors had regarded as the invention of the patents. 10x argued that the specifications described both the reflex and dual tagging methods. Both parties presented expert testimony in support of their interpretation of the specifications.

The court held that this conflicting expert testimony showed a genuine dispute of material fact, so summary judgment was not appropriate.

The court denied the motion for summary judgment.

The Case is No. 1:22-cv-01117-JHS.

Judge: Slomsky, J.

Attorneys: Karen Jacobs (Morris, Nichols, Arsht & Tunnell LLP) for 10X Genomics, Inc., and Board of Trustees of the Leland Stanford Junior University. Brian E. Farnan (Farnan LLP) for Parse Biosciences, Inc.

Companies: 10X Genomics, Inc.; Board of Trustees of the Leland Stanford Junior University; Parse Biosciences, Inc.

Cases: Patent DelawareNews