Multi-District Panel Denies Transfer Where Plaintiff Had History of Licensing and Prior Actions Had Settled Early in Litigation

August 13, 2012

The patent holder, Genetic Technologies Limited ("GT") sought centralization in the District of Colorado or, alternatively, in the Northern District of California of six actions involving the alleged infringement of a patent concerning methods of genetic testing. The six actions were pending in the Northern District of California, the District of Connecticut, the Middle District of North Carolina and three actions in the District of Delaware. All of the responding defendants opposed centralization.

The Panel found that centralization was not appropriate and would not serve the convenience of the parties and witnesses or further the just and efficient conduct of the litigation. Several factors weighed against centralization, particularly the patent holder's litigation history. "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." In addition, GT's extensive licensing activities also weighed against centralization. "As in In re ArrivalStar, 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."

The Panel also concluded that the different defenses of the defendants also weighed against centralization. "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, 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." The Panel also found that the opportunity for common discovery was limited: "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)."

In addition, the Panel concluded that because three of the cases were before one judge in Delaware coordination may be possible with the other judges. "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 workable alternative to formal centralization."

Accordingly, the Panel denied the plaintiff's request for centralization.


In re: Genetic Technologies Limited ('179) Patent Litigation, MDL No. 2376

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.