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Precision Bio Says Federal Court Stays IP Litigation by Cellectis

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Precision Biosciences said today that a federal court has stayed patent litigation brought against it by Cellectis.

Following a "non-final" decision by the US Patent and Trademark Office in the spring, the US District Court for the Eastern District of North Carolina has ordered all proceedings in the case be suspended until the USPTO has finished its reexamination of US Patents 6,610,545 and 7,309,605, to which Cellectis holds exclusive rights.

In June, Precision Bio said that the USPTO had twice rejected all claims asserted against it by Cellectis. The decision was "non-final," however, and Cellectis could file comments to reconsider the rejections and reopen prosecution.

Today, Precision Bio said that the district court significantly noted that it is "highly unlikely" that any appeal of the USPTO's decision will be resolved before the patents expire. The company expects the stay to remain in force until after they expire, "at which point no injunction against Precision's activities may issue under the asserted claims, and Precision will enjoy continuing freedom to operate its business," it said in a statement.

Precision Bio added that almost all claims asserted against the company have been amended by the patent holders in the reexamination proceedings "in an effort to overcome the PTO's repeated rejection of the claims."

If any claims survive reexamination, the company said, Cellectis would not be able to collect damages for alleged infringement where "those amendments are substantial in nature."

The '545 and '605 patents are both titled "Nucleotide Sequence Encoding the Enzyme I-SceI and the Uses Thereof," and cover methods of using Group I intron-encoded endonucleases to produce a site-directed double-stranded break in DNA to promote genetic recombination in organisms.

Institut Pasteur and Université Pierre et Marie Curie own the patents and licensed them to Cellectis, which has exclusive rights to them. In 2008, it sued Precision Bio for allegedly infringing the patents.

In response, Precision Bio requested the USPTO reexamine the two patents on the grounds that their claims are obvious in view of several references that had not been previously considered by the patent examiners. Last year, the USPTO agreed to that request.