EpiCypher Swaps Suit Against Competitor for ‘Mutual’ Cross-Licensing Agreement
Durham-based biotech firm EpiCypher is dropping a patent infringement lawsuit against one of its main competitors.
This week, the company, which provides tools and service for epigenetics and chromatin biology research, said it has agreed to “put differences aside” with California-based Active Motif to sign a global settlement, effectively ending its ongoing litigation. Instead, the companies said they will pursue a “mutual” cross-licensing agreement of their respective intellectual property (IP) in CUT&Tag-sequencing, also known as Cleavage Under Targets and Tagmentation, a method used to analyze protein interactions with DNA.
Since 2020, the companies have been embroiled in a patent dispute.
“Today’s announcement is great for EpiCypher, Active Motif, and our collective customers,” said EpiCypher’s chief business officer Martis Cowles, Ph.D. “The partnership is a natural fit, and we look forward to working with Active Motif to maximize the impact of CUT&Tag technology on chromatin science and drug development.”
As part of the cross-licensing agreement, the companies agreed that both Active Motif’s and EpiCypher’s IP are equally valid, and that both sets of IP are required to commercialize products and services that use technology involving targeted transposition techniques such as CUT&Tag.
Each agreed to provide to the other company a non-exclusive, royalty-bearing license to enable commercialization of products, kits, and services that use targeted Tn5/CUT&Tag-based workflows. The companies also agreed to pool their IP and work together to sublicense targeted tagmentation technology for emerging fields of use, including single cell and spatial genomics assays.
“This places Active Motif and EpiCypher in a very strong position in the targeted transposition market,” the companies said in a joint statement.
Targeted transposition technology has become increasingly important in simplifying the study of protein-DNA interactions. That’s particularly useful in the era of precision medicine, which combines the use of genomics and big data to tailor treatments to specific groups, as opposed to a “one-drug-fits-all” model. To date, it’s one of the most promising approaches to tackling diseases that have thus far eluded effective treatments or cures, such as cancer, neurodegenerative diseases, and rare genetic conditions.
“We are pleased to be collaborating with EpiCypher to bring targeted transposition to the research and biotech communities,” said Active Motif’s founder Joe Fernandez.
Founded in 2012, EpiCypher is based on the work from the laboratories of Mark Bedford, Ph.D., Or Gozani, M.D., Ph.D. and Brian Strahl, Ph.D.
Strahl is a faculty member in the Department of Biochemistry and Biophysics at the University of North Carolina at Chapel Hill.
In 2016, EpiCypher received a $250,000 small business research loan from the North Carolina Biotechnology Center. Two years later, it won four grants totaling about $2.5 million from the National Institutes of Health. NCBiotech also provided a $3,000 award to the company in 2019 to fund an industrial internship.