OptiGen, LLC v. Texas A&M University System et al
Filing
35
CONSENT JUDGMENT: in favor of OptiGen, LLC against Texas A&M University System, and Dr. Ernest Gus Cothran. Texas A&M and its employees, including but not limited to Dr. Ernest Gus Cothran shall be permanently enjoined from all activity that constitu tes practicing the inventions contained in the following patents: U.S. Patent No. 5,804,388, U.S. Patent No. 6,201,114, U.S. Patent No. 6,210,897, U.S. Patent No. 6,428,958, U.S. Patent No. 7,312,037, Texas A&M shall be permanently enjoined from all activity that constitutes practicing the inventions for commercial purposes of the invention contained in U.S. Patent No. 7,285,388. The Court shall retain jurisdiction over this matter to enforce the terms of this Consent Judgment. Signed by Judge Glenn T. Suddaby on 2/6/2010. (jmb)
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF NEW YORK
OPTIGEN, LLC,
Plaintiff,
v.
INTERNATIONAL GENETICS, INC., et al, Defendants.
Civil No. 09-cv-00006
(GTS/GJD) (LEAD CASE)
OPTIGEN, LLC,
Plaintiff,
v.
CONSENT JUDGMENT
TEXAS A&M UNIVERSITY SYSTEM, ERNEST GUS COTHRAN, DNA
DIAGNOSTICS, INC., d/b/a SHELTERWOOD LABORATORIES, MELBA S. KETCHUM,
INTERNATIONAL GENETICS, INC., GENETIC
CivilNo.5:09-CV-457 (GTS/GJD) (MEMBER CASE)
FULFILLMENT USA, LLC, PINPOINT DNA
TECHNOLOGIES, INC., and RICHARD B.
DOBBINS,
Defendants.
WHEREAS, Plaintiff OptiGen, LLC ("OptiGen") filed a complaint in this matter on April 17,2009 (the "Complaint"), against Defendant Texas A&M University System ("Texas
A&M"), among others, alleging patent infringement and unfair competition claims related to the
testing of canine DNA for certain genetic disorders;
WHEREAS, this Consent Judgment shall not be construed as an admission of
wrongdoing or liability by Texas A&M;
NOW, THEREFORE, in the interest of resolving OptiGen's claims asserted against Texas A&M, before the taking of any testimony and without trial or adjudication of any issue of
fact or law herein, OptiGen, Texas A&M and its employees (including but not limited to
Dr. Ernest Gus Cothran) (hereinafter collectively referred to as the "Parties") hereby stipulate and consent to entry of this Consent Judgment, pursuant to Fed. R. Civ. P. 54 and 58, as set forth
below:
1.
Texas A&M and its employees (including but not limited to Dr. Cothran) shall be
permanently enjoined from all activity that constitutes practicing the inventions contained in the
following patents: (i) (ii) (iii) (iv) (v) 2. U.S. Patent No. 5,804,388 U.S. U.S. U.S. U.S. Patent No. 6,201,114 Patent No. 6,210,897 Patent No. 6,428,958 Patent No. 7,312,037
Texas A&M shall be permanently enjoined from all activity that constitutes
practicing the inventions for commercial purposes of the invention contained in U.S. Patent No.
7,285,388. 3. Texas A&M and its employees (including but not limited to Dr. Cothran) shall not
provide others with material assistance in practicing the inventions contained in the patents identified in paragraphs 1 and 2. The prohibition contained in this paragraph is without
geographical limitation, and prohibits Texas A&M and Dr. Cothran from providing material
assistance to any person or entity located anywhere in the world. The Parties acknowledge and agree that the teaching and/or practice of general testing techniques that have no specific relationship to the patents at issue does not, in and of itself, constitute the provision of material assistance prohibited by this paragraph. 4. Without limiting the foregoing, the Parties agree that testing canine DNA for the
following genetic disorders is conduct prohibited by paragraphs 1,2, and 3 of this Consent Judgment: PRCD (Progressive Rod-Cone Degeneration); CLAD (Canine Leukocyte Adhesion
Deficiency); CSNB/prad (Congenital Stationary Night Blindness or Retinal Dystrophy); and that
testing canine DNA for FN (Autosomal Recessive Nephropathy) is prohibited unless done by
Texas A&M for research and educational purposes only. 5. Texas A&M and its employees (including but not limited to Dr. Cothran) agree
that they will not contest the validity of the patents identified in paragraph 1 or 2. 6. This Consent Judgment shall bind Texas A&M, its agents, employees, officers,
directors, and affiliates (including but not limited to Dr. Cothran), and shall be binding on any and all successors and assigns of Texas A&M, and its agents, employees, officers, directors, and
affiliates.
7.
All factual statements and representations set forth in this Consent Judgment are
made solely for the purposes of settlement. The parties agree that this Consent Judgment shall be entered without Findings of Fact and Conclusions of Law having been made and entered by the Court. The provisions of this Consent Judgment shall not be construed or deemed an admission or acknowledgement by Texas A&M of any liability or fault or fact or of the application of any law with respect to any claim that may be asserted against Texas A&M under
Federal or State law by any person or entity.
8.
Nothing in this Consent Judgment shall be construed to waive, limit, or affect any
right, claim or remedy OptiGen or Texas A&M may have against any other person related to this action, including but not limited to any other defendant in this action.
9. Nothing in this Consent Judgment shall be construed to waive, limit, or affect any
right, claim or remedy any remaining defendant may have against any other person related to this action, including but not limited to Texas A& M, or any other defendant in this action. 10. Nothing in this Consent Judgment shall be construed as an adjudication of the
validity or infringement of the patents at issue in this action.
11.
Nothing in this Consent Judgment shall be construed to waive, limit, or affect any
right, claim or remedy Texas A&M may have under a certain Agreement for Release of
Invention Rights executed on or about December 7,2005.
12. Nothing contained in this Consent Judgment prohibits OptiGen from seeking
discovery from Texas A&M in support of its claims against the remaining defendants in this
action.
13. 14.
Judgment.
The Parties have read this Consent Judgment and voluntarily agree to its entry. The remaining defendants in these actions do not object to entry of this Consent
15.
In consideration of the stipulated relief, the sufficiency of which is acknowledged,
OptiGen shall fully and completely release Texas A&M, including all of its past and present
agents, employees, officers, directors, and affiliates (including but not limited to Dr. Cothran) of any and all claims connected with or arising out of the allegations contained in the Complaint in
the above-captioned action, up to and including the date of this Consent Judgment.
16.
17.
The Parties agree to bear their own costs and fees in this matter.
Each Party participated in the drafting of this Consent Judgment, and each agrees
that the Consent Judgment's terms may not be construed against or in favor of any Party by
virtue of draftsmanship. Each signatory further agrees they have authority to enter into this
Consent Judgment. Texas A&M represents that this Consent Judgment has been duly authorized
under Texas A&M University System Policy 9.04.
18.
This Consent Judgment, including any issues relating to its interpretation or
enforcement, shall be governed by the laws of New York. The Court shall retain jurisdiction over this matter to enforce the terms of this Consent Judgment.
Dated: February 4,2010 OPTIGEN, LLC
By:
s/Jodvann Galvin HODGSON RUSS LLP Jodyann Galvin The Guaranty Building
140 Pearl Street
Buffalo, New York 14202 Telephone: (716) 856-4000
Attorneys for Plaintiff OptiGen, LLC
TEXAS A&M UNIVERSITY SYSTEM
By:
s/Andrew C. Smith PILLSBURY WINTHROP SHAW PITTMAN LLP
David A. Crichlow Andrew C. Smith
1540 Broadway New York, NY 10036-4039 Telephone: (212) 858-1000 Facsimile: (212) 858-1500
Attorneys for Defendant Texas A&M University System
s/Dr. Ernest Gus Cothran Dr. Ernest Gus Cothran (proceeding pro se) Texas A&M University Department of Veterinary Integrative Biosciences College of Veterinary and Biomedical Sciences
TAMU 4458
College Station, TX 77843-5548 Telephone: (979) 845-0229 Fax:(979)847-8981
SO ORDERED
BY THE COURT
Dated:
Hon. Glenn T.Suddaby United States District Judge
A
042290X10002 Litigalion 7223935vl
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