Genetic Technologies Limited v. Agilent Technologies, Inc.

Filing 45

JOINT STIPULATION AND ORDER RE 44 TO STAY LITIGATION PENDING RESOLUTION OF THE EX PARTE REEXAMINATION OF THE PATENT IN SUIT AS MODIFIED BY THE COURT. Signed by Judge Richard Seeborg on 8/28/12. (cl, COURT STAFF) (Filed on 8/28/2012)

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RODNEY B. SORENSEN, Bar No. 196926
[e-mail]
PAYNE & FEARS LLP
Attorneys at Law
One Embarcadero Center, Suite 2300
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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Robert R. Brunelli (admission pro hac vice)
[e-mail]
Benjamin B. Lieb (admission pro hac vice)
[e-mail]
SHERIDAN ROSS P.C.
1560 Broadway, Suite 1200
Denver, CO 80202-5141
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff
GENETIC TECHNOLOGIES LIMITED

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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GENETIC TECHNOLOGIES LIMITED,
an Australian corporation,
Plaintiff,

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v.
AGILENT TECHNOLOGIES, INC.,
a Delaware corporation,

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CASE NO. 3:12-cv-01616-RS
JOINT STIPULATION TO STAY
LITIGATION PENDING RESOLUTION OF
THE EX PARTE REEXAMINATION OF
THE PATENT IN SUIT AS MODIFIED BY THE
COURT
Courtroom:
Judge:

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Hon. Richard Seeborg

Defendant.
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WHEREAS, Plaintiff Genetic Technologies Limited ("GTG") filed the above-captioned
action against Defendant Agilent Technologies, Inc. ("Agilent"), alleging infringement of U.S.

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Patent No. 5,612,179 (the "patent in suit"), which expired on March 9, 2010;
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JOINT STIPULATION TO STAY LITIGATION PENDING
RESOLUTION OF THE EX PARTE REEXAMINATION OF THE
PATENT IN SUIT

Case No. 3:12-cv-01616-RS

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WHEREAS, on June 28, 2012, the United States Patent & Trademark Office ("PTO")

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granted a request for ex parte reexamination of the patent in suit made by Merial L.L.C., a

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defendant accused of infringing the patent in suit in another action, which is currently pending in

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the District of Delaware.

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WHEREAS, because the patent in suit has expired, the claims of the patent in suit must

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either be confirmed or rejected in their current form in the ex parte reexamination; they cannot be

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amended;

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WHEREAS, the parties have conferred and agreed that a stay of this action under the
circumstances is in the best interest of both parties and promotes judicial economy; and
WHEREAS, plaintiff GTG has agreed that if all claims subject to the ex parte

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reexamination are found to be unpatentable, it will dismiss its complaint against Agilent with
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prejudice;

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IT IS HEREBY STIPULATED and agreed, subject to the approval of the Court, that this

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action will remain stayed pending completion of all reexamination proceedings at the PTO

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involving the patent in suit (including all appeals and subsequent proceedings before the PTO or

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United States Court of Appeals for the Federal Circuit).

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IT IS FURTHER STIPULATED and agreed, subject to the approval of the Court, that

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within ten (10) business days after the final completion of all reexamination proceedings
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(including all appeals and subsequent proceedings before the PTO or United States Court of

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Appeals for the Federal Circuit), the parties shall jointly notify the Court in writing of the

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completion of the reexamination proceeding, and counsel for both parties shall contact chambers

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to schedule a status teleconference.
IT IS FURTHER ORDERED that the parties must submit a joint status report every 120 days,

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from the date of this order, advising the Court as to the state of reexamination proceedings.

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JOINT STIPULATION TO STAY LITIGATION PENDING
RESOLUTION OF THE EX PARTE REEXAMINATION OF THE
PATENT IN SUIT

Case No. 3:12-cv-01616-RS

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DATED: August 27, 2012

SHERIDAN ROSS P.C.

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By: /s/ Benjamin B. Lieb
Rodney B. Sorensen
[e-mail]
PAYNE & FEARS LLP
Attorneys at Law
One Embarcadero Center, Suite 2300
San Francisco, CA 94111
[phone]
[phone] (facsimile)
Robert R. Brunelli (Pro Hac Vice Admitted)
[e-mail]
Benjamin B. Lieb (Pro Hac Vice Admitted)
[e-mail]
SHERIDAN ROSS P.C.
1560 BROADWAY, Suite 1200
Denver, Colorado 80202-5141
[phone]
[phone] (facsimile)
[e-mail]
ATTORNEYS FOR PLAINTIFF
GENETIC TECHNOLOGIES LIMITED

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JOINT STIPULATION TO STAY LITIGATION PENDING
RESOLUTION OF THE EX PARTE REEXAMINATION OF THE
PATENT IN SUIT

Case No. 3:12-cv-01616-RS

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DATED: August 27, 2012
By: /s/ Sasha G. Rao
Sasha G. Rao (CSB # 244303)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284
Tel: [phone]
Fax: [phone]

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Christopher J. Harnett
[e-mail]
Kevin J. Post
[e-mail]
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
Tel: [phone]
Fax: [phone]

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ATTORNEYS FOR DEFENDANT
AGILENT TECHNOLOGIES, INC.

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It is so ORDERED.

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8/28
Dated: _______

, 2012
Honorable Richard Seeborg
United States District Judge
Northern District of California

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JOINT STIPULATION TO STAY LITIGATION PENDING
RESOLUTION OF THE EX PARTE REEXAMINATION OF THE
PATENT IN SUIT

Case No. 3:12-cv-01616-RS