By Donald Zuhn --
Earlier this week, we reported on two recently filed patent cases: the first by StemCells, Inc. against Neuralstem, Inc., asserting infringement of U.S. Patent Nos. 7,115,418 and 7,361,505, and the second being filed by Neuralstem, seeking a declaratory judgment of noninfringement, unenforceability, and invalidity of the '505 patent. The '505 patent, which is directed to multipotent neural stem cell compositions, was issued on April 22, 2008.
In a May 7th press release concerning its declaratory judgment filing, Neuralstem stated that StemCells "intentionally withheld crucial information highly material to the patentability of StemCells' 'new' patent," and did so with an intent to deceive the USPTO. In particular, Neuralstem asserts in its complaint that StemCells failed to disclose "pending litigation with Neuralstem, the reexaminations filed by Neuralstem, and the prior art cited in those reexaminations" (the litigation and reexaminations are discussed below). With respect to the prior art cited in the reexaminations, Neuralstem contended that the art was cited, but only after the issue fee for the '505 patent had been paid. Neuralstem President and CEO Richard Garr contended that while "it is clear that we are not infringing this patent, . . . the threatening statements in [StemCells'] press release of April 23rd leave the misleading impression that we would require a license from them as a result of the issuance of this patent," and "[n]othing could be further from the truth."
The newly filed cases do not mark the first time that the two companies have squared off in court. In 2006, StemCells filed suit against Neuralstem, asserting infringement of four other neural stem cell patents. Neuralstem responded to that suit by filing requests for ex parte reexamination of all four of the asserted patents. Last month, the U.S. Patent and Trademark Office issued a Notice of Intent to Issue an Ex Parte Reexamination Certificate for two of the four StemCells patents. The two companies quickly issued competing press releases asserting that the USPTO had upheld the patents with only minor changes (according to StemCells) or with "numerous substantial changes" (according to Neuralstem).
On May 6th, Neuralstem announced that it had filed a motion to reopen the 2006 lawsuit, which had been stayed pending the outcome of the reexamination proceedings. Neuralstem CEO Richard Garr contended that "the recent actions of the U.S. Patent Office now entitle [Neuralstem] to summary judgment in the case," and that "[c]ompletely contrary to the public statements made by StemCells, Inc., the Patent Office actions have destroyed the basis for the infringement suit filed by StemCells, Inc." In a May 12th press release, Neuralstem reiterated its position "that actions of the Patent Office have destroyed the basis for [StemCells'] infringement assertions against [Neuralstem]."
In response to Neuralstem's May 7th press release, StemCells issued its own statement, announcing that it had filed suit against Neuralstem in the Northern District of California with claims for patent infringement, libel, and unfair competition. In its statement, StemCells contended that "Neuralstem’s repeated false statements and public accusations over the past year, culminating in its allegations on the procurement of the ‘505 patent this month, together with its continued and willful infringement of StemCells’ intellectual property, necessitated the Company’s California action." In response to Neuralstem's assertion that StemCells was unwilling to reopen the 2006 (implying that the reexamination result had been less than favorable for StemCells), StemCells President and CEO Martin McGlynn stated that "[o]nce the reexaminations of all [four] patents have been fully settled, we will move to reopen the Maryland litigation and have our day in court." For now, it appears that the battle between the two companies is far from over.
For additional information about this and other related topics, please see:
• "Neuralstem Announces Grant of European Patent for Neural Stem Cells," April 30, 2008
• "StemCells Announces Issuance of Human Neural Stem Cell Patent," April 24, 2008
• "StemCells' Patents Survive Reexam -- StemCells and Neuralstem Differ on Extent of Changes," April 22, 2008
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