HOPKINTON, Mass.—Seeking new ways to leverage its formidable patent estate, Caliper Life Sciences announced in early January a non-exclusive patent license for a major portion of its microfluidics intellectual property to Predicant, a clinical proteomics company based in South San Francisco, Calif.
"Caliper has the broadest IP in microfluidics which is the core technology for our sample processing and separation prior to use in the mass spectrometer," says Shawn Becker, Predicant's vice president of market development. "We chose microfluidics as the core of our diagnostic approach and using Caliper's microfluidics (technology) provides us with an elegant solution to protein separation prior to mass spec that is reproducible, which is needed for a clinical setting."
Currently the sole licensee of Caliper technology, Predicant becomes the first company to benefit from Caliper's new, more open approach to licensing and leveraging its patent estate. "We've invested a lot money over the past five years – over $125 million – to build up this IP estate," says Kevin Hrusovsky, president and chief executive officer of Caliper, "We are undertaking this strategy of out-licensing as a way to monetize the value of our estate and to be proactive in bringing it to other technologies and other areas where we don't have a direct market channel."
While terms of the deal with Predicant were not released, the basic model for such agreements and for future agreements with other companies would provide an up-front payment to Caliper for the use of its patents, plus ongoing royalties from any products brought to market that make use of the patents.
Caliper sees significant opportunity in mass spectrometry which is one such area where the company does not have a direct channel in the life sciences market.
"We think there is tremendous potential for microfluidics in mass spectrometers and we have studied this for about four years," says Hrusovsky. "Predicant was a good fit because we had developed key beliefs based on our mass spec work and they were able to see all of the same powerful benefits. That told us that we were looking at a forward–thinking and capable company and a good fit for using our intellectual property."
Clearly, though, Hrusovsky sees Predicant as merely the first of what the company anticipates will be many suitors for its intellectual property, and there is good reason for such optimism. In May 2004, the MIT Technology Review's annual patent survey ranked Caliper's patent estate second to only Pfizer in the biotechnology/ pharmaceutical sector, and third in the "current impact index" which measures the frequency of a company's portfolio being mentioned as prior art in other patents. "The real strategy is to make this technology that we've created a much more common place standard technology that a lot of companies are utilizing and bringing the technology to life through numerous instruments and applications," Hrusovsky says.
In the meantime, Predicant feels fortunate it found a technology that allows the continued development of what could be an important clinical tool that can be applied across numerous diseases including cancer, autoimmune disorders and cardiovascular disease. While the company is focused on providing its proteomic test product a clinical tool, there is also potential for its use in drug discovery.