The opinion of the court was delivered by: Ricardo M. Urbina United States District Judge
Document No. 16 Document No. 17
DENYING THE DEFENDANTS'MOTION FOR A PROTECTIVE ORDER
These cases come before the court under 35 U.S.C. § 146, and involve a district court review of two decisions by the Board of Patent Appeals. The plaintiffs contend that the defendants are interfering with the plaintiffs' patents for animal cloning (Civ. Action No. 05-353) and methods of producing embryonic stem cells by nuclear transfer (Civ. Action No. 05-706). The animal cloning patent involves the method by which defendant Geron Corporation cloned the sheep "Dolly."
The plaintiffs initiated patent dispute proceedings (known as 'interference' proceedings), before the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences (hereinafter, "the Board"), against the defendants' patent applications. On December 20, 2004 and February 11, 2005, the Board found for the defendants as to both patent interferences.
In the current action, the plaintiffs seek reversal of the Board of Patent Appeals's decisions. Presently before the court is the defendants' motion for a protective order. Basically, the defendants would like to limit the scope of this action to a review of the Board of Patent Appeals's decision. For this reason, they seek a protective order limiting the scope of discovery to issues previously discovered and raised during the Board proceedings. Because the defendants fail to demonstrate that the discovery sought is not reasonably calculated to lead to the discovery of admissible evidence or that they would suffer clearly defined and serious injury absent the issuance of a protective order, the court denies their motion for entry of a protective order.
A. Patent Dispute Giving Rise to Civil Action 05-353
Civil Action 05-353 (hereinafter, the "353 Action"), involves competing patents regarding methods of cloning non-human animals. On January 10, 1997, Steven Stice, working for plaintiff University of Massachusetts, submitted a patent application to clone non-human animals using "nuclear transfer" with "a cycling (non-quiescent) donor cell." 353 Action Compl. ¶ 9. This application resulted in U.S. Patent No. 5,945,577 (hereinafter the "577 Patent"). Id.; Defs.' Mot. ¶ 2. From this patent, plaintiff Advanced Cell Technologies, Inc., as an assignee of the 577 Patent, cloned two heifers, affectionately named George and Charlie, from cells of an adult cow. 353 Action Compl. at 2.
Meanwhile, on August 29, 2000, Keith Campbell, working for defendant Roslin Institute, submitted a patent application, U.S. Patent Application No. 09/650,194 (hereinafter the "194 Application") to clone non-human animals, 353 Action Compl. ¶ 9; Defs.' Mot. ¶ 3, using "nuclear transfer" with "a quiescent donor cell," 353 Action Compl. at 2. From this patent, defendants Geron Corporation and Exeter Life Sciences, as assignees of the 194 Application, cloned a lamb, infamously known as "Dolly," from an adult ewe. Id. at 1-2.
B. Patent Dispute Giving Rise to Civil Action 05-706
Civil Action 05-706 (hereinafter, the "706 Action"), involves competing patents regarding methods of producing embryonic stem cells by nuclear transfer. 706 Action Compl. at 1-2. On March 22, 2001, the U.S. Patent and Trademark Office issued U.S. Patent No. 6,235,970 (hereinafter, the "970 Patent") to Steven Stice. Id. ¶ 9. On November 21, 2001, Keith Campbell filed his own patent application ...