United States District Court, N.D. California, San Francisco Division
GENETIC TECHNOLOGIES LIMITED, an Australian corporation, Plaintiff,
AGILENT TECHNOLOGIES, INC., a Delaware corporation, Defendant
[Copyrighted Material Omitted]
For Genetic Technologies Limited, an Australian Corporation, Plaintiff: Benjamin Baughman Lieb, Hiwot Molla Covell, Robert R. Brunelli, Todd P. Blakely, LEAD ATTORNEYS, Sheridan Ross, P.C., Denver, CO; Rodney B. Sorensen, Esq., Payne & Fears LLP, San Francisco, CA.
For Agilent Technologies Inc, a Delaware corporation, Defendant: Christopher John Harnett, LEAD ATTORNEY, Ropes & Gray, LLP-New York, New York, NY; Kevin John Post, LEAD ATTORNEY, Ropes & Gray LLP, New York, NY; Robert J. Goldman, Ropes & Gray LLP, East Palo Alto, CA.
ORDER DENYING DEFENDANT'S MOTION TO DISMISS
RICHARD SEEBORG, United States District Judge.
Plaintiff Genetic Technologies Limited (" GTG" ) brings this action for infringement of U.S. Patent No. 5,612,179 (" the '179 patent" ) against defendant Agilent Technologies, Inc. Agilent moves to dismiss plaintiff's Second Amended Complaint (" SAC" ) under Rule 12(b)(6) of the Federal Rules of Civil Procedure, arguing the '179 patent claims an unpatentable law of nature. Although the '179 patent does embrace a law of nature, defendant's motion to dismiss must be denied, because Agilent has not shown by clear and convincing evidence that the patent does not claim meaningfully limited applications of that natural law.
A. Procedural History
On May 25, 2011, GTG filed a complaint asserting infringement of the '179 patent against multiple defendants, including Agilent, in the District Court of Colorado. Agilent, like many of the other defendants in the case, moved to dismiss the complaint and sever plaintiff's claims against them. Following an initial Rule 16 conference and some preliminary motion practice on discovery matters, the court granted defendants' respective motions to sever plaintiff's claims, and transferred the resulting cases to various venues around the country. The court denied defendants' remaining motions to dismiss as moot.
On March 28, 2012, GTG filed its First Amended Complaint in this district. (ECF No. 2). Agilent moved to dismiss and GTG moved to stay the proceedings pending resolution of a multi-district litigation (MDL) motion to transfer and consolidate the case. (ECF No. 20; ECF No. 21). A previous order granted GTG's motion to stay and denied without prejudice Agilent's motion to dismiss. (ECF No. 37). The MDL panel denied GTG's motion to centralize its various infringement actions, but the case was once again stayed pending an ex parte reexamination of the '179 patent. (ECF No. 41; ECF No. 45).
Following the completion of the reexamination, GTG filed its Second Amended Complaint (SAC) on December 5, 2013. (ECF No. 65). The SAC alleges that Agilent directly infringed or induced infringement of claims 1-13 and 15-18 of the '179 patent. Agilent now moves to dismiss GTG's complaint, arguing the '179 patent
claims non-patentable subject matter under 35 U.S.C. § 101. ( See ECF No. 67). In particular, Agilent contends the claims cover natural phenomena or laws of nature that are not entitled to patent protection. Id. at 1-4.
B. Technology at Issue
This case involves technology related to deoxyribonucleic acid (DNA). (SAC at ¶ 7). The Supreme Court recently provided the following background on DNA:
Genes form the basis for hereditary traits in living organisms. . . . The human genome consists of approximately 22,000 genes packed into 23 pairs of chromosomes. Each gene is encoded as DNA, which takes the shape of the familiar " double helix" that Doctors James Watson and Francis Crick first described in 1953. Each " cross-bar" in the DNA helix consists of two chemically joined nucleotides. . . . Sequences of DNA nucleotides contain the information necessary to create strings of amino acids, which in turn are used in the body to build proteins. Only some DNA nucleotides, however, code for amino acids; these ...