Precision BioSciences Wins Patent Infringement Lawsuit against Cellectis

Mon May 6, 2013 4:00am EDT

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Precision BioSciences Wins Patent Infringement Lawsuit against Cellectis

Jury Invalidates Asserted Claims of Cellectis Patent, Finds Precision Did Not Literally Infringe

Precision BioSciences, Inc., a leader in the field of genome engineering, today announced that it has won a patent infringement lawsuit against Cellectis SA. A jury in the United States District Court for the District of Delaware found that all of the claims of Cellectis’ U.S. Pat. No. 7,897,372 (“the ‘372 patent”) that were asserted against Precision are invalid and that Precision did not literally infringe the asserted claims.

“This verdict represents a fantastic victory for the Precision BioSciences team and all of our partners,” said Precision BioSciences CEO Matthew Kane. “We will continue to seek to work collaboratively with all members of the biotechnology industry, but we hope this decision underscores that we will defend ourselves vigorously and effectively.”

This litigation was the third infringement action brought by Cellectis against Precision since 2008. To date, every patent claim asserted by Cellectis against Precision has been (a) held invalid by a United States District Court judge, (b) found invalid by a jury in a United States District Court trial, (c) held invalid by the US Patent and Trademark Office, or (d) dismissed by Cellectis in the relevant litigation.

“Clearly, Cellectis’ attempts to harm Precision’s business in the courts have been futile and ultimately self-defeating,” stated Derek Jantz, Precision BioSciences’ Chairman and Vice President of Scientific Development. “We find it particularly puzzling that Cellectis made no attempt to engage us prior to filing suit on three separate occasions. We are happy to be done with this litigation and are looking forward to focusing our efforts on our unique and innovative genome engineering technology.”

Today, Precision controls a growing patent estate consisting of over fifteen allowed genome engineering patents in the U.S., Europe and Australia. Precision has asserted twelve of these patents against Cellectis in the United States. Those lawsuits are currently pending in the United States District Court for the District of Delaware.

Mr. Kane affirmed, “We have always preferred to find business solutions to our business disputes. Nonetheless, we are prepared to vigorously assert our legitimate intellectual property rights against Cellectis and its customers if those rights are not respected.”

Precision has been represented in patent prosecution and reexamination proceedings by Michael Twomey of WilmerHale, and in the ‘372 patent litigation by Dave Bassett and Vinita Ferrera of WilmerHale.

History of Cellectis’s Patent Litigations Against Precision

In March of 2008, and shortly after Precision announced a major collaboration with a leading agricultural company, Cellectis filed suit against Precision, accusing it of infringing U.S. Patent Nos. 6,610,545 (“the ‘545 patent”) and 7,309,605 (“the ‘605 patent”). Cellectis provided no warning to Precision prior to filing suit. Precision believed that neither patent was related in any way to its business and that the asserted claims of both patents were invalid, and requested that the US Patent and Trademark Office (USPTO) reexamine the asserted claims of both patents, as well as the claims of two related patents, U.S. Patent No. 6,833,252 and U.S. Patent No. 7,214,536. As a result, all of the asserted claims of the ‘545 and ‘605 patents were subsequently found to be invalid by the USPTO, and the first of Cellectis’s litigations was ‘stayed’ or stopped by the court.

In November of 2010, Cellectis again filed suit against Precision, this time accusing it of infringing U.S. Patent No. 7,842,489 (“the ‘489 patent”) on the same date that the patent issued. As before, Cellectis provided no warning and sought no discussion with Precision prior to filing suit. As Precision had not infringed, was not infringing, and had no intention of infringing any claim of the ‘489 patent, the parties stipulated to dismissal of all claims and counterclaims. Precision initiated an ex parte reexaminaton of the ‘489 patent in the USPTO, which is now pending. Precision fully expects all of the claims of this patent to be found unpatentable.

In March of 2011, Cellectis for the third time filed suit against Precision, this time accusing it of infringing the ‘372 patent on the same date that the patent issued. Again, Cellectis provided no warning and sought no discussion with Precision prior to filing suit. Precision requested that the USPTO reconsider the claims of this patent in both a request for ex parte reexamination and a subsequent request for inter partes reexamination, both of which have been granted. In the ex parte reexamination, which remains pending, the USPTO has rejected all of the claims in a non-final action. In spite of this, Cellectis chose to continue its suit against Precision and also accused Precision of unfair competition. The suit went to trial and the jury determined that Precision did not literally infringe the asserted patent claims, did not unfairly compete, and that the asserted claims of the ‘372 patent are invalid both as obvious over the prior art and for failure to satisfy the written description requirement. In addition, the court held certain other claims invalid for indefiniteness.

About Precision BioSciences

Precision BioSciences’ mission is to continually provide, improve, and enable the world’s most powerful genome engineering technology. Precision’s proprietary Directed Nuclease EditorTM (DNE) technology enables the production of genome editing enzymes that can insert, remove, modify, and regulate essentially any gene in mammalian or plant cells.

Precision BioSciences’ vision is to be the conduit through which the world’s greatest genome engineering challenges are solved. Precision has successfully utilized its DNE technology to create innovative products in partnerships with many of the world’s largest biopharmaceutical and agbiotech firms. Internally, Precision is developing DNE-based products for biologics manufacturing and human therapeutics. For additional information, please visit www.precisionbiosciences.com.

Precision BioSciences
Chelsea Lynam, +1 919-314-5512
chelsea.lynam@precisionbiosciences.com

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