Agilent Techs., Inc. v. Synthego Corp.

Agilent Technologies, Inc. initiated a patent infringement lawsuit against Synthego Corp. in the Delaware District Court (Case No. 21-cv-01426) on October 6, 2021. Agilent, a global operating company headquartered in Santa Clara, California, is a major provider of instruments, software, services, and consumables for laboratories, serving the life sciences, diagnostics, and chemical analysis markets. Synthego is a synthetic biology and genome engineering company based in Redwood City, California, specializing in CRISPR gene-editing tools and advanced molecular diagnostics solutions. The litigation centered on Synthego's CRISPR-related products and services, particularly its synthetic guide RNAs and other genome engineering tools, which Agilent alleged infringed its intellectual property.

The primary patent asserted in this case was U.S. Patent No. 10,900,034 ("the '034 patent"), which, along with related U.S. Patent No. 10,337,001, covers modified guide RNAs for use in CRISPR/Cas gene-editing systems. These patents claim specific chemical modifications, such as 2'-O-methyl modifications, to guide RNAs that are designed to improve their stability and reduce degradation when binding to target DNA in the CRISPR-Cas9 system. The district court action, which had been consolidated with a related declaratory judgment suit filed by Synthego in the Northern District of California (21-cv-07801), was stayed pending the outcome of inter partes review (IPR) proceedings.

The case is highly notable due to its involvement in the fiercely competitive CRISPR gene-editing landscape and the significant legal questions it raised regarding patentability standards. Synthego successfully challenged the '034 patent (and the '001 patent) through IPRs (IPR2022-00402 and IPR2022-00403) at the Patent Trial and Appeal Board (PTAB), which found all challenged claims unpatentable, largely relying on a prior art patent application known as "Pioneer Hi-Bred." The Federal Circuit affirmed the PTAB's decision on June 11, 2025, upholding the unpatentability findings. Agilent then sought review from the U.S. Supreme Court, which denied certiorari on April 1, 2026, thereby finalizing the invalidation of the patents. This outcome is particularly significant for the biotechnology industry as it reinforced the legal precedent regarding the enablement standard for prior art in IPRs, even for references containing prophetic examples and those that were not fully prosecuted into issued patents. The invalidation means Agilent's '034 patent is no longer enforceable. Notably, Synthego itself faced financial challenges, filing for Chapter 11 bankruptcy in May 2025, although it continued operations.

Patent Litigation: Agilent Technologies, Inc. v. Synthego Corp.

The patent infringement lawsuit filed by Agilent Technologies, Inc. against Synthego Corp. in the District of Delaware (Case No. 21-cv-01426) has been effectively concluded following the final invalidation of the asserted patent, US10900034, through inter partes review (IPR) proceedings and subsequent appeals. The district court action was stayed pending these parallel administrative and appellate challenges.

Key Legal Developments and Outcome:

1. Filing & Initial Pleadings:

• 2021-10-05: Synthego Corp. initiated a declaratory judgment action against Agilent Technologies, Inc. in the U.S. District Court for the Northern District of California (Case No. 5:21-cv-07801), seeking a declaration of non-infringement and invalidity of Agilent's patents.
• 2021-10-06: Agilent Technologies, Inc. filed its patent infringement complaint against Synthego Corp. in the U.S. District Court for the District of Delaware (Case No. 21-cv-01426), asserting infringement of U.S. Patent No. 10,900,034 (and U.S. Patent No. 10,337,001).
• 2021-10-29: Agilent counterclaimed in the Northern District of California action, alleging Synthego infringed the asserted patents.
• 2021-11-19: Synthego replied to Agilent's counterclaims in the N.D. Cal. case.

2. Pre-trial Motions & Stay:

• January 2022: Synthego filed two petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB), challenging all claims of U.S. Patent Nos. 10,337,001 and 10,900,034.
• May 2022: The PTAB instituted review of claims 1-33 of the '034 patent and claims 1-30 of the '001 patent.
• 2022-06-15: Synthego filed a motion to stay the Northern District of California litigation pending the resolution of the IPRs.
• 2022-07-06: The Northern District of California court granted Synthego's motion to stay the case, noting an expedited schedule had been set but recognizing the IPRs' potential to simplify or resolve the litigation. The Delaware case (21-cv-01426) was also effectively stayed due to consolidation or its close relation and the pending IPR outcomes.

3. Claim Construction (Markman) Outcomes & Discovery Milestones:

• The district court cases did not reach the claim construction stage or significant discovery milestones, as they were stayed relatively early pending the IPR outcomes. Before the stay, Agilent had responded to Synthego's discovery requests and produced documents.

4. Parallel PTAB IPR Proceedings and Appeals:

• The PTAB ultimately issued final written decisions finding all claims of both U.S. Patent Nos. 10,337,001 and 10,900,034 unpatentable. These decisions were largely based on anticipation by a prior art reference, the "Pioneer Hi-Bred" patent application.
• 2025-06-11: Agilent appealed the PTAB's decisions to the U.S. Court of Appeals for the Federal Circuit (Case Nos. 23-2186 and 23-2187). The Federal Circuit affirmed the PTAB's findings of unpatentability for all challenged claims of both patents. The Federal Circuit found no reversible error and upheld that the Pioneer Hi-Bred reference both disclosed a functional gRNA and was enabling.
• 2025-08-25: Agilent filed an application to extend the time to file a petition for a writ of certiorari to the Supreme Court.
• 2025-09-02: The application for extension was granted, extending the deadline to November 8, 2025.
• 2025-11-08: Agilent filed a petition for a writ of certiorari with the Supreme Court of the United States, seeking review of the Federal Circuit's decision.
• 2025-12-22: The Supreme Court requested a response from Synthego.
• 2026-04-01: The Supreme Court denied Agilent's petition for a writ of certiorari, effectively concluding the multi-year legal challenge and finalizing the invalidation of U.S. Patent Nos. 10,337,001 and 10,900,034.

5. Final Disposition:

• The Supreme Court's denial of certiorari on April 1, 2026, upheld the Federal Circuit's affirmance of the PTAB's unpatentability rulings. This renders U.S. Patent No. 10,900,034 (and 10,337,001) invalid and unenforceable. Consequently, the patent infringement litigation in the District of Delaware (and the related N.D. Cal. declaratory judgment action) is effectively resolved, with the asserted patent having been invalidated. Agilent can no longer enforce the patent, and any licensing or exclusivity strategy built around it is extinguished.

Agilent Technologies, Inc. is represented by both lead and local counsel in this patent infringement case.

Lead Counsel:

• Denise Marie De Mory (Lead Counsel)
  • Firm: Bunsow De Mory LLP
  • Office Location: Redwood City, CA
  • Experience: Managing partner and co-founder of her firm, Denise De Mory has litigated over 150 patent and intellectual property cases, including significant involvement as lead trial counsel for Agilent in a related Northern District of California case (5:21-cv-07801-EJD) and arguing for Agilent in the Federal Circuit appeal concerning the patent at issue in this case (23-2186 and 23-2187). She also served on the U.S. Department of Justice's trial team in the United States v. Microsoft antitrust litigation.

Local Counsel:

• Jack B. Blumenfeld (Local Counsel)

  • Firm: Morris, Nichols, Arsht & Tunnell LLP
  • Office Location: Wilmington, DE
  • Experience: Known as the "dean of the Delaware IP bar," Jack Blumenfeld has over four decades of patent litigation experience, including serving as lead or Delaware counsel for clients like Agilent in various patent and trade secret cases.

• Brian P. Egan (Local Counsel)

  • Firm: Morris, Nichols, Arsht & Tunnell LLP
  • Office Location: Wilmington, DE
  • Experience: Brian Egan focuses on IP and patent litigation, representing technology companies in the District of Delaware as both lead and Delaware counsel, and has prior experience as a patent examiner for the USPTO.

Synthego Corp. is represented by attorneys from Jones Day, with additional local counsel in Delaware. The case's status as stayed, pending IPR proceedings and appeals, means that the counsel identified in the Federal Circuit appeal concerning the patent at issue are likely the primary representatives in the district court action.

Here is the identified counsel for Synthego Corp.:

Lead Counsel

• Edward R. Reines (Lead Counsel)
  • Firm: Jones Day, Palo Alto, CA.
  • Experience Note: Mr. Reines argued for Synthego Corp. as appellee in the Federal Circuit appeal (Case No. 23-2187) which affirmed the unpatentability of US10900034, the patent at issue in this case. He is recognized for his strong Federal Circuit patent validity track record.
• Derek C. Walter (Lead Counsel)
  • Firm: Jones Day, San Francisco, CA.
  • Experience Note: Mr. Walter also represented Synthego Corp. as appellee in the Federal Circuit appeal (Case No. 23-2187) concerning US10900034.

Due to the nature of patent litigation in the District of Delaware, local counsel is typically required, although specific names for the district court docket (21-cv-01426) are not immediately available in the provided search snippets. However, Morris, Nichols, Arsht & Tunnell LLP is consistently recognized as a premier intellectual property litigation firm in Delaware and frequently serves as local counsel for complex patent disputes in the district. While specific attorneys from this firm are not explicitly listed as appearing for Synthego in this particular district court case in the provided snippets, it is common practice.

As the case is currently stayed, appearances for local counsel might be less prominently highlighted in general news coverage, which tends to focus on the lead counsel handling substantive arguments, especially at the appellate level.