Sequenom Purchases Noninvasive Prenatal Testing Intellectual Property From Isis Innovation

SAN DIEGO and OXFORD, England, Oct. 6, 2014 /PRNewswire/ -- Sequenom, Inc. SQNM, a life sciences company providing innovative genetic analysis solutions and Isis Innovation Ltd., the technology transfer company of the University of Oxford, today jointly announced that Sequenom has purchased noninvasive prenatal testing intellectual property from Isis Innovation, for $14.55 million, which includes $3.2 million as the final royalty payment due to Isis under the prior agreement and the waiver of $2.1 million in paid legal fees that Isis owed to Sequenom, with additional downstream payments contingent on revenues exceeding certain thresholds.

Under the terms of the agreement, Sequenom is now the owner of global intellectual property for noninvasive prenatal genetic diagnostic testing on paternally inherited fetal nucleic acids derived from maternal plasma or serum.  Sequenom previously had exclusive rights to this intellectual property under a licensing agreement with Isis Innovation established in 2005. As part of the purchase agreement, Isis Innovation has rights in certain fields of use. No additional terms were disclosed. 

"The patents purchased from Isis Innovation will enable us to strengthen our intellectual property position worldwide, while reducing future expenditures," said William Welch, Chief Executive Officer at Sequenom, Inc. "We look forward to leveraging this important intellectual property for additional applications of our technology in the future."

"This patent assignment represents a highly significant deal for us," said Tom Hockaday, Managing Director of Isis Innovation Ltd. "It enables us to return considerable value to the University of Oxford, the inventors of the technology and the other organizations which supported the original research. We value our long-standing relationship with Sequenom and wish them continued success with their prenatal tests."

The intellectual property purchased by Sequenom includes a portfolio of globally issued patents in the United States, Europe, Japan, Hong Kong, Canada and Australia. In October 2013, the U.S. District Court ruled that certain claims of U.S. Patent No. 6,258,540 ("540 patent") are directed to non-patentable subject matter under U.S. Code § 101. The '540 patent ruling by the U.S. District Court is currently under appeal by Sequenom to the U.S. Court of Appeals for the Federal Circuit. The Patent Trial and Appeal Board recently ruled in favor of seven claims contained within the '540 patent. Valid and enforceable patents are issued in Europe, Japan, Hong Kong, Canada and Australia.

About Sequenom
Sequenom, Inc. SQNM is a life sciences company committed to improving health care through revolutionary genomic and genetic analysis solutions. Sequenom develops innovative technologies, products, and diagnostic tests that target and serve molecular diagnostic markets. Web site: www.sequenom.com.

About Isis Innovation
Isis Innovation is the research and technology commercialization company of the University of Oxford.  Isis Innovation provides access to technology from Oxford researchers through intellectual property licensing, spin-out company formation and material sales, and to academic expertise through Oxford University Consulting.

Isis Innovation is the highest university patent filer in the UK and is ranked 1st in the UK for university spin-outs, having created more than 100 new companies in 25 years. In the last financial year, Isis Innovation completed 503 licenses and consulting agreements for Oxford, and Isis Enterprise - its innovation management consultancy - signed 85 deals with clients around the world. For updates on innovations from Oxford, follow Isis Innovation on LinkedIn and Twitter or subscribe at www.isis-innovation.com

Forward-Looking Statement 
Except for the historical information contained herein, the matters set forth in this press release, including statements regarding contingent additional downstream payments, the ability of the purchased patents to strengthen Sequenom's intellectual property position worldwide and reduce future expenditures, Sequenom's ability to leverage the patents purchased from Isis Innovation for additional applications of Sequenom's technology, Sequenom's appeal to the Federal Court Circuit of Appeals regarding the '540 patent ruling, and Sequenom's commitment to improving health care through revolutionary genomic and genetic analysis solutions are forward-looking statements within the meaning of the "safe harbor" provisions of the Private Securities Litigation Reform Act of 1995. These forward-looking statements are subject to risks and uncertainties that may cause actual results to differ materially, including the risks and uncertainties associated with the value of the patents purchased from Isis Innovation being less than anticipated, Sequenom's ability to leverage the patents purchased from Isis Innovation for additional applications of Sequenom's technology, Sequenom or third parties obtaining or maintaining regulatory approvals that impact Sequenom's business, government regulation particularly with respect to diagnostic products and laboratory developed tests, publication processes, the performance of designed product enhancements, Sequenom's ability to develop and commercialize technologies and products, particularly new technologies such as noninvasive prenatal diagnostics and laboratory developed tests, Sequenom's financial position, the timing and amount of reimbursement that Sequenom Laboratories receives from payors for its laboratory developed tests, Sequenom's ability to manage its existing cash resources or raise additional cash resources, competition, intellectual property protection and intellectual property rights of others, litigation involving Sequenom, and other risks detailed from time to time in Sequenom's most recently filed Current Reports on Form 8-K, its most recently filed Quarterly Report on Form 10-Q and its Annual Report on Form 10-K for the year ended December 31, 2013, and other documents subsequently filed with or furnished to the Securities and Exchange Commission. These forward-looking statements are based on current information that may change and you are cautioned not to place undue reliance on these forward-looking statements, which speak only as of the date of this press release. All forward-looking statements are qualified in their entirety by this cautionary statement, and Sequenom undertakes no obligation to revise or update any forward-looking statement to reflect events or circumstances after the issuance of this press release. 

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SOURCE Sequenom, Inc.