Exonhit Therapeutics SA et al v. Jivan Biologics Inc

Filing 158

ORDER GRANTING MOTION TO LIFT STAY, SETTING STATUS CONFERENCE, AND VACATING HEARING by Judge Alsup granting 155 Motion Lifting Stay (whalc1, COURT STAFF) (Filed on 12/1/2009) (Additional attachment(s) added on 12/2/2009: # 1 order) (sis, COURT STAFF).

1 2 3 4 5 6 7 8 9 10 EXONHIT THERAPEUTICS S.A., a French societe anonyme, and EXONHIT THERAPEUTICS, INC., a Delaware corporation, v. Plaintiffs, No. C 07-01427 WHA ORDER GRANTING MOTION TO LIFT STAY, SCHEDULING STATUS CONFERENCE, AND VACATING HEARING IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

United States District Court

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For the Northern District of California

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JIVAN BIOLOGICS, INC., a Delaware corporation, Defendant. / In this patent infringement action, plaintiffs Exonhit Therapeutics S.A. and Exonhit Therapeutics, Inc. move to lift the stay of litigation granted over eighteen months ago pending reexamination of the patent-in-suit by the PTO (see Order Granting Motion to Stay, Dkt. No. 143). For the reasons set forth below, the motion is hereby GRANTED. This case, filed over 32 months ago, was originally scheduled for trial on September 29, 2008 (Dkt. No. 22). Following the close of discovery, and shortly after plaintiffs filed a summary judgment motion, defendant Jivan Biologics, Inc. filed a motion to

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stay this action pending ex parte examination by the PTO of the patent-in-suit, U.S. Patent No. 6,881,571 (Dkt. No. 129). The motion was reluctantly granted on June 9, 2008, after careful consideration of the unusual circumstances of this case led to the conclusion that a more efficient resolution of the action would likely result from the PTO's reexamination. On October 1, 2009, the PTO gave "Notice of Intent to Issue Ex Parte Reexamination Certificate," whereby it indicated its intent to re-affirm the validity of all 22 claims of the `571 patent (Exh. A to Thomson Decl., Dkt. No. 157-1).1 As such, the sole justification for issuing the stay ­ awaiting the outcome of the PTO's reexamination ­ is now absent. While the formal issuance of the reexamination certificate is pending, the Court sees no reason why the gears of litigation should not resume turning now. Since defendant failed to file any opposition to plaintiffs' motion before the filing deadline, plaintiffs' motion to lift the stay is hereby GRANTED, the stay is to be lifted immediately, and the hearing on this motion set for December 17, 2009, is VACATED. The parties are ORDERED to appear for a status conference on DECEMBER 10, 2009, AT 11:00 P.M. in courtroom 9. Please file a joint case management statement no later than noon on December 7.

United States District Court

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For the Northern District of California

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IT IS SO ORDERED.

Dated: December 1, 2009.

WILLIAM ALSUP UNITED STATES DISTRICT JUDGE

While affirming the validity of all 22 claims, the notice indicated that two clarifying amendments were made to claims 1 and 12 of the `571 patent. The significance (if any) of these amendments will be addressed at the appropriate time. 2
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