English
Death by Amendment, Practical Impacts of Patent Reexamination Pendency
Cellectis Patent Surrendered by Operation of Inter Partes Reexamination Pendency
Last week, the litigation between Cellectis S.A. and Precision Biosciences Inc., (E.D. N.C) No: 5.08-CV-00119-H was stayed pending the outcome of inter partes patent reexamination proceedings involving the patents at issue in the litigation, namely, U.S. Patents 6,610,545 and 7,309,605. In the decision to stay the case, the same familiar factors were analyzed. Of particular interest is the court’s discussion of the “undue prejudice” factor.
In discussing the undue prejudice factor, the court noted that both of the patents at issue will expire in May of 2012. By pointing this out, the court surmised that should the case be stayed, any improper shifting of market share (due to infringement) would be transient at best in view of the relatively imminent patent expiration. Thus, the court found that the balance of equities favored staying the case. With regard to patent expiration, the court explained:
[I]t is uncertain whether the PTO’s reexamination will be completed before the patents expire and highly unlikely that any appeal of the PTO’s decision will be resolved prior to the expiration of the patents.
In pointing out this fact, the court unknowingly emphasized a sad reality for Cellectis. By amending the ‘605 Patent, Cellectis has effectively surrendered this patent by operation of USPTO pendency. Read the rest of this entry »
