Bioconvergence specialist BICO has signed a license agreement with 3D bioprinting company Organovo to end their long-standing legal dispute.
Although it dismissed claims that it infringed Organovo’s patents as “invalid” in its former guise as CELLINK, BICO has now agreed to license the technologies, in exchange for dropping the lawsuits. The move, the company says, will only serve to fuel its desire to expand its product portfolio and “further empower it to continue to advance” in the field of 3D bioprinting.
“It will further enable an even more innovative and revolutionary commercial program, accelerate development for our customers and strengthen our position in the market; resulting in better long-term profitability,” explained BICO CEO Erik Gatenholm. “From here, we will focus on strategic sales efforts to gain market share as well as our ambitious new instrument launch program.”
Competition over the intellectual property of bio-printing
The dispute between BICO and Organovo dates back to at least June 3, 2021, when the former actually filed a patent infringement action against the latter under file number ‘1:21-cv-00832’. Although these proceedings did not become public for some time, due to a non-disclosure agreement (NDA) between the companies, when published they made it clear that BICO alleged that five Organovo patents had infringed his.
Filed as legal documents US9149952B2, US9855369B2, US8931880B2, US9227339B2, and US9315043B2, these patents (like many) are broad in scope and cover everything from multi-nozzle printing setups to tissue engineering methods.
At the time, BICO also alleged that Clemson University patent US7051654B2 relating to “inkjet printing of viable cells” and University of Missouri filing US9752116B2 relating to “cell aggregates to automatic assembly” infringed on its intellectual property, but although neither institution has publicly commented on the proceedings, Organovo has responded with its own counterclaim.
In the company’s lawsuit, filed July 27, 2021, in federal court in Texas, it sought to challenge perceived infringements on three of its patents, which would have been relevant to the BIO X 3D bioprinter. In addition to seeking cash compensation for patents that CELLINK allegedly infringed, Organovo was said to have sought a court order, which would block any further use of its intellectual property.
From conflict to trade agreement
According to statements released by the two companies, they have now agreed to resolve their dispute via a commercial license agreement. Through the settlement, all civil actions regarding the validity of Organovo’s patents have been dismissed, with the companies also agreeing to waive all related claims, liabilities and costs, in favor of seeking a “beneficial and durable” to their legal conflict.
For BICO, this agreement gives it access to Organovo’s bioprinting technologies, effectively strengthening its already substantial portfolio. In exchange for access, the firm will have to pay around 1-2% of its total turnover for 2022, and although it deemed this figure “not significant for the group”, the capital could prove vital. for Organovo.
Following the unveiling of its first 3D bio-printed kidney tissue in 2015, the company has continued to make a series of commercial and technological advances, participating in regenerative muscle tissue research, after going public on the NASDAQ stock exchange. .
However, Organovo announced that it was forced to explore “strategic alternatives” in 2019, when it discovered that its approach to manufacturing liver tissue required significant redevelopment, and although it has since made efforts considerable effort to minimize expenses and seek funding to develop its technology, it struggled to attract funding.
In December of that year, in an effort to revive its fortunes, the company’s management agreed to merge with Tarveda Therapeutics, but at the time, its then ex-CEO Murphy wrote a letter slamming the decision, and it ultimately failed. Over the next two years, Organovo sought to salvage its reputation in the courtroom, winning a lawsuit against investor Georgi Dimitrov, but further funding eluded it.
With its BICO settlement, however, the company has finally established a new source of revenue. Although this is only a small percentage of BICO Group’s overall revenue, it represents a share of the profits of one of the industry’s leading 3D bioprinting companies. As a result, Organovo shares soared 52.6% to a high of $4.41 after the deal was announced, before falling slightly on March 4, 2022.
“Organovo celebrates the success of CELLINK’s bioprinting product lines by opening the horizons of 3D bioprinting to customers,” said Keith Murphy, Executive Chairman of Organovo. “We are proud to help enable CELLINK and BICO to develop these products and look forward to their next generation of bioprinters.”
The commercial potential of bioprinting
As with many emerging fields, 3D bioprinting is rife with new methodologies and, given their commercial potential, researchers are increasingly turning to patenting their work in order to prevent it is marketed elsewhere. Last month, Trestle Biotherapeutics licensed a bioprinting approach developed at Harvard that is believed to create functional kidney tissue.
Similarly, in January 2022, the Israeli company Matricelf signed an exclusive license agreement with the Tel Aviv University technology transfer company Ramot, for the use of a new patent-pending 3D bioprinting process. . Reportedly, the method, which involves using stem cells and extracellular matrices from patients to bioprint implants to regenerate damaged tissue, is pending patent approval in Europe and the United States.
It’s also not uncommon for 3D bioprinting companies to compare notes and share research in an effort to develop more viable human tissue. In the past, for example, 3D Systems and CELLINK have agreed to partner with CollPlant, as both companies continue to target regenerative medicine use cases, including those related to tissue bioprinting for survivors of the Cancer.
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The featured image shows a scientist using the BIO X 3D bio-printer. Image via CELLINK.