Precision BioSciences, Inc., today announced that the United States Patent and Trademark Office (PTO) has issued Final Decisions and Right of Appeal Notices in the reexamination proceedings for U.S. Pat. Nos. 6,833252, 7,214,536, 6,610,545 ("the '545 patent"), and 7,309,605 ("the '605 patent") that are owned by the Institut Pasteur and the Universite Pierre et Marie Curie, and licensed to Cellectis, SA (ALCLS). The '545 patent and the '605 patent were asserted against Precision in litigation filed in March 2008 by Cellectis. That litigation was subsequently stayed (or halted) by the court due to the PTO's actions in reexamination proceedings requested by Precision BioSciences. The final decisions issued by the PTO include rejections of every patent claim that was asserted against Precision in the litigation, as well as many related claims. In total, 78 of Cellectis' patent claims were challenged by Precision, and 77 were canceled or rejected in the final decisions from the PTO. The sole surviving claim is irrelevant to Precision's business. The patent owners have the right to appeal the decisions on reexamination to the PTO's Board of Patent Appeals and Interferences.
“We have consistently maintained that these patents were improperly asserted against us, that they were not infringed, that they were invalid in view of prior publications, and that some of the inventors and/or their attorneys improperly failed to disclose the prior publications to the Patent Office”
"We have consistently maintained that these patents were improperly asserted against us, that they were not infringed, that they were invalid in view of prior publications, and that some of the inventors and/or their attorneys improperly failed to disclose the prior publications to the Patent Office," said Matthew Kane, CEO of Precision BioSciences. "We are gratified that the Patent Office has now rejected all of the claims asserted against us on the basis of those publications, and that four more patents in Cellectis's portfolio have been found largely or completely invalid. Importantly, we want to send a clear message that Precision will respond forcefully and effectively to any unjustified assault on its ability to operate its business."
"Given that the litigation is stayed pending appeal of the PTO's decisions, and that Precision expects those decisions ultimately to be upheld in an appeals process that itself will likely extend beyond expiration of the patents asserted against Precision, Cellectis' attempt to win in the courtroom what it could not achieve in the marketplace has been an abject failure. If Cellectis wishes to compete with us, it may want to spend more money on research and less money on legal maneuvering," stated Derek Jantz, VP of Scientific Development at Precision. "An innovative and effective technology like ours will not be impeded by wrongly asserted, invalid patents."
Precision has been represented in the reexamination proceedings and in litigation against Cellectis by WilmerHale.