Genetic Technologies Limited v. Agilent Technologies, Inc.
Filing
41
ORDER by MDL Panel denying transfer. (gba, COURT STAFF) (Filed on 8/14/2012)
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Case MDL No. 2376 Document 61 Filed 08/03/12 Page 1 of 4
UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION
IN RE: GENETIC TECHNOLOGIES
LIMITED ('179) PATENT LITIGATION
MDL No. 2376
ORDER DENYING TRANSFER
Before the Panel:* Pursuant to 28 U.S.C. § 1407, patentholder Genetic Technologies
Limited (GT) seeks centralization in the District of Colorado or, alternatively, the Northern District
of California of six actions involving the alleged infringement of a patent concerning methods of
genetic testing. This litigation currently consists of six actions1 listed on Schedule A and pending in
four districts.
All responding defendants oppose centralization. Defendants Bristol-Myers Squibb Co.,
Pfizer, Inc., and Merial LLC alternatively suggest centralization in the District of Delaware.
Defendant 454 Life Sciences Corp. (454) alternatively suggests centralization in any district in which
an action is currently pending.
On the basis of the papers filed and hearing session held, we are not persuaded that
centralization would serve the convenience of the parties and witnesses or further the just and
efficient conduct of this litigation at this time. These actions involve similar allegations of
infringement of GT’s U.S. Patent No. 5,612,179 entitled “Intron Sequence Analysis Method for
Detection of Adjacent and Remote Locus Alleles as Haplotypes,” which expired in March 2010.
Despite the existence of some factual overlap among the present actions, GT has failed to convince
us that centralization is necessary in these circumstances.
Several factors weigh against centralization. The patent’s litigation history suggests that most
actions that have been filed in the past several years have not required significant judicial attention.
GT has filed at least nine actions over the course of the past nine years against at least 24 defendants,
and only one case has proceeded to claim construction. See Genetic Techs. Ltd. v. Applera Corp.,
N.D. California, No. 03cv1316. Recently, an action filed in the Western District of Texas against
seven defendants was resolved in a little over a year. See Genetic Techs. Ltd. v. Am. Esoteric Labs.
*
Judges Marjorie O. Rendell and Charles R. Breyer did not participate in the decision of this
matter.
1
Plaintiff’s motion originally included seven actions, but a District of Nebraska action (Geneseek)
has since been dismissed.
Case MDL No. 2376 Document 61 Filed 08/03/12 Page 2 of 4
-2et al., W.D. Texas, C.A. No. 11cv057. In fact, only six of the ten defendants named in the original
District of Colorado action, in which the defendants were severed and then transferred to their
present districts, continue to litigate their claims. As in In re ArrivalStar,2 the litigation history of
similar cases suggests that the advantages centralization typically affords – i.e., reducing duplicative
discovery and motion practice, etc. – may not be relevant to most litigants. Further, GT has a fairly
extensive licensing history, reportedly issuing licenses for the technology to over 60 entities.
Also weighing in favor of denying centralization is that certain defendants have idiosyncratic
potentially dispositive defenses that will implicate significant unique facts. As examples, 454 claims
laches, estoppel and/or waiver,3 and Merial contends that the claims against it are barred because of
a release in a settlement agreement previously entered into by GT, to which Merial is a third party
beneficiary. Moreover, the opportunities for common discovery may be more limited here than in
other circumstances because the inventor of the common patent, Malcolm Simons – who may have
been able to speak to issues of claim construction, patent conception and reduction of the invention
to practice – passed away in January 2012. The other major witness GT identified – Dr. Mervyn
Jacobson, GT’s Vice President of Global Licensing and Intellectual Property – is in Australia for
criminal proceedings related to market manipulation (but unrelated to this litigation). Finally, with
all three Delaware actions pending before the same judge and the six actions on the motion pending
in only four districts before four judges, coordination among the involved courts – if necessary – may
be a workable alternative to formal centralization.
Though we are denying centralization, we nevertheless encourage the parties and involved
courts to pursue various alternative approaches, should the need arise, to minimize the potential for
duplicative discovery and inconsistent pretrial rulings. See, e.g., In re Eli Lilly and Co. (Cephalexin
Monohydrate) Pat. Litig., 446 F.Supp. 242, 244 (J.P.M.L. 1978); see also Manual for Complex
Litigation, Fourth, § 20.14 (2004).
2
See In re: ArrivalStar, 802 F. Supp. 2d at 1379 (“[T]he patentholder, and other parties
opposing centralization of their individual actions, have convinced us that centralization in fact may
thwart the orderly resolution of these patent cases. ArrivalStar has brought nearly 100 actions since
it began bringing infringement suits in various districts across the country approximately seven years
ago, and none of the actions thus far appear to have required significant judicial attention.”).
3
454's answer notes that GT made several assertions of infringement against it and its
predecessor, CuraGen, starting in at least 2003 and continuing through 2006. In spite of repeated
threats of suit, and after years of allegedly prejudicial silence, GT delayed until May 2011 to bring
suit against 454.
Case MDL No. 2376 Document 61 Filed 08/03/12 Page 3 of 4
-3IT IS THEREFORE ORDERED that the motion, pursuant to 28 U.S.C. § 1407, for
centralization of the actions listed on Schedule A is denied.
PANEL ON MULTIDISTRICT LITIGATION
_________________________________________
John G. Heyburn II
Chairman
Kathryn H. Vratil
Barbara S. Jones
W. Royal Furgeson, Jr.
Paul J. Barbadoro
Case MDL No. 2376 Document 61 Filed 08/03/12 Page 4 of 4
IN RE: GENETIC TECHNOLOGIES
LIMITED ('179) PATENT LITIGATION
MDL No. 2376
SCHEDULE A
Northern District of California
Genetic Technologies Limited v. Agilent Technologies, Inc., C.A. No. 3:12-01616
District of Connecticut
Genetic Technologies Limited v. 454 Life Sciences Corporation, C.A. No. 3:12-00461
District of Delaware
Genetic Technologies Limited v. Bristol-Myers Squibb Company, C.A. No. 1:12-00394
Genetic Technologies Limited v. Pfizer, Inc., C.A. No. 1:12-00395
Genetic Technologies Limited v. Merial L.L.C., C.A. No. 1:12-00396
Middle District of North Carolina
Genetic Technologies Limited v. GlaxoSmithKline LLC, C.A. No. 1:12-00299
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