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Court Denies Invitrogen’s Request for Stay In Genetic Applications’ Infringement Case

This story originally appeared in Biocommerce Week, a newsletter that has been discontinued.
A US District Court in Texas has denied Invitrogen’s motions for a protective order and a stay in Genetic Applications’ patent-infringement suit against the firm pending the outcome of a reexamination process by the US Patent and Trademark Office.
The firms are now scheduled to present evidence at a Markman hearing in December followed by a jury trial, currently scheduled for July 2008.
San Diego-based Genetic Applications initially filed a lawsuit in the US District Court for the Eastern District of Texas against Life Technologies in June 1999 alleging infringement of US Patent No. 5,670,347, entitled “Peptide-mediated gene transfer.” However, Genetic Applications chose not to serve the suit because Life Technologies filed a request to have the patent reviewed and reissued.
On Aug. 1, 2006, the US Patent and Trademark Office reissued the patent as No. RE39220. As a result, Genetic Applications filed suit against Invitrogen, which acquired Life Technologies in 2000, in October 2006 alleging that the firm infringed the reissued patent through the sale of its Plus Reagent, which is used to introduce DNA into the nucleus of living cells.
In April, Invitrogen asked the court to stay the case pending the USPTO’s analysis of a reexamination petition filed by Invitrogen regarding the R’220 patent (see BioCommerce Week 5/30/2007).
Following that request, last week Invitrogen requested an emergency motion for protective order and a motion to stay a deposition by the firm pending the outcome of a reexamination of the patent by the USPTO.
In its petition, Invitrogen said a stay “would allow the court ample time to consider all of the issues that have been presented by the full briefing currently pending before it. … In fact, the cancellation or amendment of the claims in the reexamination process may terminate this case in its entirety.
“Thus, until the reexamination process is complete, it would be a waste of judicial and party resources and unnecessary financial burden on the parties to go forward with the deposition of Invitrogen Corporation,” the firm said in the filing.
In addition, Invitrogen pointed out in its filing that Genetic Applications “will not be prejudiced by a stay because Genetic Applications does not sell or market products covered by the patent or that compete with Invitrogen’s products.”
Genetic Applications opposed the motion for a stay and pointed out in its filing with the court that two of the three references presented by Invitrogen to the USPTO were already considered by the office during the earlier reissue proceedings.
Leonard Davis, the US District judge overseeing the case, was not sympathetic to Invitrogen’s pleas.
“Genetic Applications would be prejudiced if it was forced to wait again to pursue its infringement action against Invitrogen,” the judge wrote in his opinion denying Invitrogen’s motion for a stay.

“Invitrogen has not shown that the reexamination request is anything but a tactic to delay litigation or that this reexamination proceeding is likely to alter the claims in any way.”

“While any party has the statutory right to move for reexamination, automatically granting a stay pending a reexamination would only serve to encourage reexamination proceedings and deprive plaintiffs of their ability to seek vindication of their patent rights in a timely manner,” wrote Davis. “Invitrogen has not shown that the reexamination request is anything but a tactic to delay litigation or that this reexamination proceeding is likely to alter the claims in any way.”
Since the judge denied the motion to stay Invitrogen’s deposition, Invitrogen’s request for a related protective order was moot.
Unless the parties reach a settlement, a claims-construction hearing will take place in December, followed next summer by a jury trial.
Invitrogen officials declined to comment on the litigation or whether the firm would engage Genetic Applications in settlement discussions.
Privately held Genetic Applications sells a variety of research tools for the biotech industry including lipid-based transfection reagents, cellular transfection kits, and a cell-proliferation assay.
Invitrogen also is engaged in ongoing legal disputes with Stratagene, which has appealed a $16.2 million award granted last year to Invitrogen in a patent-infringement case (see BioCommerce Week 11/1/2006).
A separate suit filed by Stratagene, which is now part of Agilent Technologies following completion of the $250 million acquisition two weeks ago, alleges that Invitrogen is infringing a patent covering polymerase blends. In a conference call in March, Stratagene officials said they had been notified by the patent office that the firm’s patent at the center of the case would be reinstated with retroactive effect (see BioCommerce Week 3/7/2007). Stratagene is hoping this may give the firm some leverage in potential settlement talks with Invitrogen.
Meanwhile, Invitrogen recently settled a decade-old patent suit with Clontech, but settlement terms were kept confidential.

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