What to do in the US if you don't have standing to sue for revocation – more on Benitec v Nucleonics

Further to my recent post about the US CAFC decision, I was asked by a few people to dig in a little more and comment on the litigation between Benitec and Nucleonics.

Benitec withdrew
their original infringement suit against Nucleonics in relation to US 6573099,
when it became clear that they would not win in light of the newly broadened
safe harbour for research which came from the US Supreme Court decision in
Merck v Integra. In withdrawing
the suit, Benitec were forced by Nucleonics and the Judge to undertake not to
sue for any activities which occurred prior to the date on which they withdrew.
At the same time, they made noises about suing in the future should Nucleonics
have a commercial product (rather than be using the technology for

This is obviously a
long way short of a full undertaking not to sue. In fact, it leaves open the
possibility of further suit in relation to future research

In the meantime,
Nucleonics had commenced proceedings before the USPTO to have the patents Re-Examined and also filed counter claims seeking to invalidate Benitec’s patent
(or render it unenforceable).

As previously stated,
the CAFC decision holds that Nucleonics no longer has standing to bring the
invalidity suit before the court as the threat of infringement litigation has
dissipated. This is a little curious, especially given the comments made by
Benitec about potentially suing in the future. The dissenting Judgment by Judge
Dyk picks up and expands this point.

From an investor’s
point of view, then, Benitec has saved an enormous amount of money and
management time by ending the US infringement proceedings – which
is good. However, their patents are still at high risk of invalidation (or
substantial claim narrowing) in the ongoing Re-Examination proceedings, which
Nucleonics started, and which they have the right to participate in.

Even after
the Re-Examination result (which can be appealed), Nucleonics would have the
option of invalidating the claims in the future, if faced with a sufficient
threat, or indeed an infringement suit from

Note here in
particular, that according to the 20 July 2007 Court of Appeal Judgment, Benitec hasn’t fared so well in the Re-Examination proceedings
to date – all claims of the patent are currently either rejected by the Examiner, or
have been withdrawn by Benitec. I understand that Benitec have since filed a response, but that the examiner is yet to respond.

In any event, it seems that at the very least, some of
the claims asserted against Nucleonics may have been too broad, and would in
fact have been invalidated. An outcome from the Re-Examination that Nucleonics may be
seeking is that the claims are sufficiently narrowed so that Benitec can no longer sue for
infringement (as Nucleonics would be outside their scope).

On the other hand, one of the risks for
Nucleonics is that they put forward their best prior art in these Re-Examination
proceedings and the Examiner does not agree that it invalidates all of the
claims which cause potential problems for Nucleonics. This would make things
more difficult for them as they don’t have as much opportunity to fully support
their arguments with Experts and oral argument as they would in Court and once
the USPTO has reviewed prior art, the courts will assume that the patent claims
are valid in light of that art (the presumption of validity). Hence, Nucleonics
may be damaging their best case, right now.

5 Comments on “What to do in the US if you don't have standing to sue for revocation – more on Benitec v Nucleonics

  1. There were several
    re-examination requests from Nucleonics, which have been combined into one
    proceedings (original #: US 09/100,812, re-exams: US 90/007,247 and US
    As you stated the claims currently being pursued by Benitec are
    significantly limited from their original granted claims, but there have been a
    couple of rounds of communication with the examiner now, and an interview very
    recently.  The examiner at present seems to be maintaining his objections to the
    original claims, but I tend to be sceptical as after an interview objections
    that were firmly held can seem to vanish from the record with no information as
    to why. 

  2. In the US, I didn’t think it was an inter-partes re-examination, (USPTO PAIR is down at the moment, or I’d double check).  Nucleonics requested it and filed a lot of prior art, but haven’t been invited to comment further by the USPTO, all the remaining correspondence has been with the patentee only.  I guess this is in Nucleonic’s favour, they won’t have estoppel from an ex-partes procedure?Also – In Europe the case has been refused (appeal from refusal was turned down recently), there are pending divisionals but these have not started examination yet.  They do have a granted GB patent but my guess is that unfortunately this wasn’t strictly examined, the claims are much too broad bearing in mind what is happening in the US and Europe.   They also had a second family that only granted in GB, both the US and EP in this family were dropped.

  3. You are right about Re-Examination being ex parte – I have downloaded the Notice of Re-Examination and will see if I can post it. I think you’re also right that the estoppel issue won’t exist.  However, the presumption of validity problem will still be there.  Having said that, I’m not sure what other options there were for Nucleonics, given the standing issue.Europe – thanks for the update – that’s great.Does anyone think it would be worthwhile to put up a scorecard about this?

  4. Nucleonics press release released today states in part:’the [court of appeal] decision was made solely on narrow technical grounds of subject matter jurisdiction”Not only did the court not make a substantive determination upholding Benetic’s US 6,573,099 patent, …”Nucleonics does not believe that Benitec is entitled to any claims that would dominate Nucleonics’ in vivo expressed RNAi technology.’Nucleonics also stated that they agreed with Judge Dyk’s dissent and that they are considering whether to petition for a rehearing en banc by the CAFC and / or seek review by the US Supreme Court.

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