883 F. Supp. 2d 526
D. Del.2012Background
- Cellectis filed suit against Precision on March 1, 2011 alleging infringement of the '372 patent (assigned to Cellectis).
- The '372 patent covers I-CreI meganucleases with specific mutations for binding and cleavage at defined DNA sites.
- Precision moved to stay the case pending ex parte reexamination of the '372 patent and sought leave to amend to add inequitable conduct defenses.
- PTO granted ex parte reexamination on July 8, 2011; Precision moved to stay pending its outcome and later to amend; the court denied both requests.
- The court considered Baxter, Belden, and related precedents, concluded discovery was nearing completion, and found the stay unwarranted; it also found the amendment for inequitable conduct futile.
- The court entered orders denying both Precision’s stay motion and its motion to amend; the case proceeded in Delaware with subsequent related litigation in North Carolina being enjoined.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to stay litigation pending ex parte reexamination | Cellectis argues staying would unnecessarily delay and favor Precision | Precision argues ex parte reexamination is ongoing and stay is appropriate under law | Stay denied |
| Whether to amend to add inequitable conduct claims | Cellectis counters no inequitable conduct; amendment would be futile | Precision asserts misrepresentations to PTO evidence deceitful intent | Amendment denied for futility |
Key Cases Cited
- Dentsply Int’l, Inc. v. Kerr Mfg. Co., 734 F. Supp. 656 (D.Del. 1990) (courts weigh stay factors in ex parte reexamination; stay not automatic)
- In re Baxter International, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (PTO and district court may reach different results; two proceedings use different burdens of proof)
- Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (requires clear and convincing evidence of intent to deceive; materiality alone is insufficient)
- Cancer Research Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724 (Fed. Cir. 2010) (inequitable conduct requires evidence of deceptive intent beyond materiality)
- Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471 (Fed. Cir. 1986) (examiner’s evaluation is independent; counsel arguments do not substitute for evidence)