Synthego Corporation v. Agilent Technologies, Inc.

Background

Synthego Corporation, the plaintiff and counter-defendant, and Agilent Technologies, Inc., the defendant and counter-claimant, both use clustered regularly interspaced short palindromic repeats technology to develop gene-editing tools. Synthego filed this action seeking a declaratory judgment that it did not infringe U.S. Patent Nos. 10,900,034 and 10,337,001 and alleging that the patents were invalid. Agilent counterclaimed that Synthego infringed the patents by making, using, and selling products and methods involving chemically modified synthetic CRISPR guide RNA, and sought damages and other relief.

In January 2022, Synthego filed two petitions for inter partes review, an administrative patent review conducted by the Patent Trial and Appeal Board, challenging all claims of the two patents. In May 2022, the Board instituted review of claims 1–33 of the ’034 patent and claims 1–30 of the ’001 patent. Synthego then moved to stay the federal case until those reviews were resolved. Agilent opposed the motion.

The court’s analysis

The court applied three factors commonly used to decide whether to stay a patent-infringement case pending patent review: the stage of the litigation, whether the review would simplify the issues, and whether the stay would unduly prejudice or tactically disadvantage the party opposing it.

Stage of the case. The court found that the litigation was still in its early stages. Fact discovery had only begun, expert discovery and claim construction had not begun, and no trial date had been set. Agilent had produced 83,000 pages of documents and the parties had exchanged several sets of contentions and preliminary claim constructions, but the court concluded that substantial work remained and that there had been no material progress warranting denial of a stay.

Potential simplification. The court determined that the patent reviews could cancel or modify claims, eliminate the need for a trial, or narrow the issues. Even if the reviews did not resolve every invalidity issue, the court found that waiting could provide guidance from the patent agency, avoid inconsistent results, and conserve judicial resources.

Prejudice and tactical disadvantage. Agilent argued that the patent-review process would not provide enough discovery to develop a full factual record and that Synthego had delayed filing its review petitions. Agilent also argued that the stay would delay enforcement of its patent rights, cause lost profits and business opportunities, and harm its competition with Synthego. The court was not persuaded that these concerns established undue prejudice. It noted that the patent-review rules allow additional discovery, that Synthego filed its petitions within months of starting the action and timely moved for a stay, and that delay alone generally does not establish undue prejudice. The court also found that Agilent had identified multiple competing companies in the relevant markets and had not provided concrete evidence of lost sales to Synthego. Its assertions about likely future losses and price erosion were speculative.

Disposition

The court GRANTED Synthego’s motion to stay. The action was stayed in its entirety pending the inter partes reviews. All pending motions were terminated for administrative purposes only and without prejudice to renewal after the stay is lifted.