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Court Denies Motion to Sever, Finds Sufficient Commonalities for Joinder

In Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civ. No. 10-735-SLR (D. Del. Dec. 22, 2011), discussed previously here, Judge Robinson denied a defendant’s motion to sever or stay the litigation against it in a situation where the defendant argued that, unlike its co-defendant, it never had (and never would) commercialize the technology accused of infringement, and where there existed no allegation that its activities or products overlapped with its co-defendant to satisfy the “common transaction” requirement of FRCP 20(a). Id. at 1-2. Instead, the defendant argued, the allegations against it were based solely on non-commercial presentations made by its employees at biotech conferences. Id. at 2. The Court found that an issue of fact existed as to whether presentations made by the defendant’s employees amounted to “offers for sale” and whether the defendant’s research, if infringing, constituted permissible experimental use. Id. at 4. Further, because the defendant’s accused technology “shares fundamental elements in common with” the other defendant’s accused product (which was undisputed during briefing), the Court found that joinder was appropriate. Id. Specifically, the Court credited the plaintiff’s undisputed assertion that the defendants’ technologies were similar in that both rely on “detecting labeled nucleotides as a polymerase, [using] four nucleotides with distinct fluorescent labels and optical detection zones limited to the immediate vicinity of the polymerase.” Id. Finally, the Court rejected the argument that severance was appropriate because the co-defendants were direct competitors, finding that the agreed upon protective order and prosecution bar were adequate safeguards of confidential information and, moreover, that inadvertant disclosure likely would not result in substantial harm given the defendant’s assertion that it did not plan to commercialize its technology. Id. at 5.


Helicos Biosciences Corp. v. Pacific Biosciences of California, Civ. No. 10-735-SLR (Dec. 22, 2011).

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