BICO (formerly CELLINK), the world’s leading bio convergence company, and Organovo Holdings, Inc., a biotechnology company that specialises in 3D bioprinting to aid drug development, have finally reached an agreement to end their legal battle over the use of Organovo’s patents. Under the new licensing agreement on bioprinting patents, BICO and its affiliate companies will have access to Organovo’s foundational patent portfolio in 3D bioprinting.
History of Dispute
The dispute between Organovo and CELLINK (now BICO) started when the former claimed patent infringement by CALLINK. CELLINK however deemed these claims to be ‘invalid’ and in turn filed a patent infringement lawsuit against the Organovo. The patents in question cover multiple aspects including bioprinters with one of more printheads, devices, systems and methods of fabricating tissues. This dispute since then ballooned and the next date for the hearing was scheduled for April 2023.
Organovo, too, has a tumultuous history to draw on. It debuted its first bioprinted kidney tissue in 2015, the same year it went public. However, it was unable to make significant progress in technology since 2015, and in 2019, it was forced to consider strategic business alternatives due to the need to redevelop its method for fabricating liver tissues.
Adding to the woes, Ex-CEO Keith Murphy also wrote a scathing letter against the board, accusing them of “not being able to be trusted at all.”
Licensing Agreement on Bioprinting Patents
Their hearing was set for April 2023, but rather than going through the process the hard way, both parties agreed to reach an amicable settlement through an agreement. BICO and its affiliate companies will now be able to access Organovo’s patent portfolio in 3D bioprinting as part of the licencing agreement on bioprinting patents.
All civil actions regarding potential infringement and IPRs concerning the validity of Organovo’s patents are also dismissed or terminated under this new agreement. Both BICO and Organovo have agreed to release each other from all previous claims, demands, liabilities, and costs in favour of the beneficial and long-term solution that this licencing agreement on bioprinting patents has created.
The licensing agreement on bioprinting patents puts an end to the lawsuit and the associated legal fees, and BICO agrees to pay Organovo for the licencing agreement. The upfront payment is $1.5 million, with royalties ranging from low to high single digit percentages of the licenced products’ net sales.
Early bioprinting work by Gabor Forgacs, Organovo’s scientific founder, and Thomas Boland of Clemson, both bioprinting pioneers, was licenced exclusively by Organovo. Following its founding, the company pioneered 3D bioprinter technology and obtained a broad set of patents that provide foundational claims in the bioprinting field. The company wants to make these patents available for licence to first-rate bioprinter developers in order to broaden the technology’s impact and serve the needs of a wide range of researchers and other bioprinting users.
“Organovo celebrates the success of CELLINK’s bioprinting product lines in opening up the horizons of 3D bioprinting to customers. We are proud to be a part of enabling CELLINK and BICO to grow these products and we look forward with excitement to their next generation of bioprinters.”– Keith Murphy, Executive Chairman, Organovo
Organovo has included a description of all material terms of the settlement agreement in its 8K filing, as required by the SEC. The entire agreement will be included as an exhibit in the Company’s Annual Report on Form 10-K for the fiscal year ending March 31, 2022.
About Manufactur3D Magazine: Manufactur3D is an online magazine on 3D Printing. Visit our Global News page for more updates on Global 3D Printing News. To stay up-to-date about the latest happenings in the 3D printing world, like us on Facebook or follow us on LinkedIn and Twitter.