Benzinga | Jul 27, 2021 12:28PM EDT

10x Genomics Entered Global Settlement And Patent Cross License With Bio-Rad Laboratories Resolving All Outstanding Litigation; Co. To Pay Bio-Rad $29.4M In Royalties And Interest Related To GEM Product Sales

On July 27, 2021, 10x Genomics, Inc. (the "Company") announced that it entered into a global settlement and patent cross license with Bio-Rad Laboratories, Inc. ("Bio-Rad") resolving allOn July 27, 2021, 10x Genomics, Inc. (the "Company") announced that it entered into a global settlement and patent cross license with Bio-Rad Laboratories, Inc. ("Bio-Rad") resolving all outstanding litigation and other proceedings between the two companies across all jurisdictions around the world and dismissing all infringement claims with prejudice.



Pursuant to the terms of the Settlement and Patent Cross License Agreement dated July 26, 2021 (the "Agreement"), Bio-Rad and the Company have granted each other a non-exclusive, worldwide, royalty-bearing license to develop products and services related to single cell analysis. The cross license excludes products related to spatial analysis and In Situ analysis.It also excludes digital PCR products in the case of 10x. The term of the Agreement is for the life of the licensed patents. The Company and Bio-Rad have agreed not to sue each other on licensed products and licensed services on other patents owned or exclusively licensed by each company. The companies have agreed that each company's patents are owned by each respective company.



Each company shall pay to the other royalties from licensed products and licensed services through 2030. The Company expects that future royalty payments will impact the company's gross margins by less than one percent during the royalty period. Also, as previously disclosed, the Company accrued $44.8 million in royalties and interest between November 14, 2018 and March 31, 2021 related to sales of the Company's GEM products as a result of the litigation with Bio-Rad. Pursuant to the Agreement, the Company shall pay Bio-Rad $29.4 million in royalties and interest related to the sales of such GEM products between November 14, 2018 and March 31, 2021. As a result, in connection with the Agreement the Company expects that $15.4 million in accrued royalties and interest will be reversed to the Company's financial statements in the second quarter of 2021.



The foregoing description of the Agreement does not purport to be complete and is qualified in its entirety by reference to the complete text of the Agreement, which, with certain confidential terms redacted, is filed as Exhibit 10.1 to this current report on Form 8-K.