By Robert Dailey --
Life sciences companies Invitrogen and Genetic Applications (GA) have settled the patent infringement suit that GA filed last year alleging infringement of U.S. Reissued Patent No. RE39,220.
The '220 patent is directed to methods of transplanting DNA into a eukaryotic genome to yield hematopoietic cell lines. These cell lines are generally useful for simulating an in vivo micro-environment in vitro. Thus, they are useful for drug discovery and toxicology screening.
Invitrogen had been using the patented technology since the late 1990s. GA knew of the infringement, and had even sued Invitrogen in 1999 for infringement of the predecessor patent to the reissue, but because of a defect in the complaint, the suit was dismissed.
Later in 1999, GA filed for a reissue of the patent on which it had sued Invitrogen. The reissue patent was not issued until 2006. At that point, GA again filed suit against Invitrogen - this time in the Eastern District of Texas' "Rocket Docket."
In a summary judgment motion filed in October, Invitrogen argued that the reissue patent is unenforceable due to laches. GA knew of Invitrogen's infringement in 1999 and waited seven years to sue. Of course, GA might argue that the laches clock should be tolled during the 7-year-long reissue proceedings at the PTO.
This brings up an interesting wrinkle related to reissue proceedings from 35 U.S.C. § 252 (emphasis added):
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing....
Hence, as far as the law is concerned, GA continued to have standing to maintain its infringement suit from 1999, even though it had requested a reissue. By waiting on the sidelines for seven years, GA became a victim of the laches clock. It may have been better to maintain the suit and ask the Court to stay proceedings pending the results of the reissue proceedings.
Details of the settlement have not become public. Nevertheless, GA settled the case without ever filing a brief answering Invitrogen's motion for summary judgment on the laches issue. This likely bodes well for Invitrogen.
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