Skip to main content

Premaitha to Appeal UK Patent Infringement Ruling in Case Against Illumina

NEW YORK (GenomeWeb) – Premaitha Health announced today that a UK court will allow the firm to appeal a recent ruling in favor of Illumina in patent infringement litigation between the companies.

In 2015, Illumina and its wholly owned subsidiary Verinata Health sued Premaitha over five patents related to noninvasive prenatal testing, claiming that Premaitha's Iona test infringed on the intellectual property. Illumina holds an exclusive license to the patents from Sequenom and Stanford University.

The lawsuit was later consolidated with related patent-infringement suits Illumina filed against The Doctors Laboratory, TDL Genetics, and Ariosa Diagnostics. In November 2017, the UK's High Court of Justice, Chancery Division, Patents Court found that Premaitha had indeed either fully or partial infringed on all five patents.

However, Premaitha said today that the UK High Court has accepted its request to appeal the finding of infringement, including a ruling on European Patent (UK) 0 994 963 — also known as the Lo 1 patent — which covers a method of detecting the presence of a paternally inherited nucleic acid sequence of fetal origin, which is not possessed by the pregnant female, in a maternal serum or plasma sample.

According to Premaitha, the court found during a hearing yesterday that Illumina had no standing to bring a claim of infringement for the Lo 1 patent since it was determined that the company is not the patent's sole exclusive licensee and that most of the patent's claims are invalid. As a result, Illumina was ordered to pay Premaitha’s costs associated with the exclusive licence issue. However, Illumina has been granted the right to appeal this ruling.

In conjunction with its appeal, Premaitha said that it has been ordered to pay interim costs to Illumina of around £1.5 million ($2.1 million), although this money will be returned to Premaitha if its appeal is successful. Premaitha said it has also agreed to pay 10 percent of its UK revenues earned from the date of the hearing into an escrow facility for the duration of the appeal process "as a reasonable reserve for potential future damages if the appeal is unsuccessful."

Premaitha noted that Illumina's request for an immediate injunction against the Iona kit in the UK has been stayed until the resolution of the appeal. Earlier this month, Thermo Fisher Scientific loaned Premaitha $3 million to cover its costs related to the Illumina litigation.

"We anticipate the appeal cycle will take at least 12 months and the costs will be significantly lower than those we have incurred to date," Premaitha CEO Stephen Little said in a statement. "We have attempted to engage Illumina into meaningful settlement discussions both before and since the November judgment. We will continue to pursue such discussions … [and] are open to terms that are financially viable for us to offer Iona within the UK without the negative drag on the whole market that this litigation engenders."

Little noted that the UK market represents less than 15 percent of Premaitha's revenue run rate.