Litigation

E.I. du Pont de Nemours & Co. v. Cetus Corporation

judgment
Filed
1990-08-01
Terminated
1991-02-27

Patents at issue (2)

4683195
4683202

Defendants (1)

Summary

DuPont filed a declaratory judgment action against Cetus challenging the validity of the PCR process patents. On February 27, 1991, the federal district court in San Francisco ruled in Cetus's favor, holding the patents valid and DuPont not to infringe; DuPont reportedly did not appeal.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources before drafting.

Good material. Now let me pin down the docket details, judge, and the infringement verdict.

Strong detail emerging. Let me verify the judgment/non-infringement outcome, the appeal, and the reexamination numbers.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case thoroughly. Let me start with several searches.

Let me dig into the docket details, the opinions, and the trial.

Let me pull the Duke University trial archive and search for the verdict specifics and pleadings.

E.I. du Pont de Nemours & Co. v. Cetus Corp., No. C‑89‑2860 MHP (N.D. Cal., Judge Marilyn Hall Patel)

Three framing caveats before the chronology, because they shape what "key developments" even exist here:

  1. This is a pre‑Markman case. Markman v. Westview Instruments was decided in 1996. There was no separate claim‑construction hearing; claim scope was argued to the jury and embodied only in the jury instructions (Duke archive, "Jury Instructions," 1991‑02‑25).
  2. This is a pre‑PTAB case. The PTAB did not exist until 2012 (AIA). The functional analogue here was ex parte reexamination under 35 U.S.C. §§ 301–307, which turned out to be the single most important event in the litigation.
  3. Filing‑date discrepancy. The case metadata says the complaint was filed 1990‑08‑01. The court's own opinion states the declaratory judgment action was filed 1989‑08‑01, and the docket number (C‑89‑2860) and contemporaneous trade coverage agree with 1989. I use 1989‑08‑01 below, per the court's opinion: E.I. du Pont de Nemours & Co. v. Cetus Corp., No. C‑89‑2860, 1990 WL 305551, 19 U.S.P.Q.2d 1174 (N.D. Cal. Dec. 3, 1990) (reproduced at https://storage.courtlistener.com/recap/gov.uscourts.vaed.[246719](/patent/246719)/gov.uscourts.vaed.246719.48.0.pdf). If the metadata date is authoritative in the case file, treat 1990‑08‑01 as the pleaded filing date and 1989‑08‑01 as the date the court recited.

1. Filing and initial pleadings

  • 1989‑08‑01 – Complaint filed in N.D. Cal., San Francisco. DuPont sought a declaratory judgment of no liability under U.S. Patent Nos. 4,683,202 (process for replicating nucleic acids via paired primers and repeated cycles) and 4,683,195 (PCR plus hybridization‑probe detection). DuPont pleaded that it had made "substantial investments" in nucleic‑acid replication/detection kits for the research market. Jurisdiction pleaded under 28 U.S.C. §§ 1331, 1338(a), 2201 and 35 U.S.C. §§ 271, 281–285; venue under 28 U.S.C. § 1391(c). Complaint text reprinted in Biotechnology Law Report (BLR 1013), 8 BLR 483 (1989), https://doi.org/10.1089/blr.1989.8.483.
  • Counsel (from the trial transcripts): For DuPont — **Rothwell, Figg,

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for DuPont in this case using web search.

Let me dig into the actual complaint and trial record for counsel names.

Good progress. Let me verify the Pillsbury local counsel names and check for a docket sheet.

Bottom line

The plaintiff in this case is E.I. du Pont de Nemours & Company ("DuPont"). The record shows a three-part team: a Washington, D.C. patent boutique as lead/principal outside counsel (Rothwell, Figg, Ernst & Kurz), a San Francisco firm as local counsel (Pillsbury, Madison & Sutro), and DuPont in-house counsel. E. Anthony ("Tony") Figg was lead counsel and delivered both the opening statement and closing argument for DuPont. The only name on the plaintiff's team I cannot confirm is the Pillsbury attorney, whose surname is garbled in the OCR of the complaint caption.

Caveat on sourcing: This is a 1989–1991 N.D. Cal. case that predates PACER; I found no online docket sheet and no sealed/withheld filings to report. My names come from (a) the reprinted complaint caption, (b) trial transcript cover pages in Duke University's Cetus/PCR archive, and (c) the trial narrative. Docket entry numbers are unavailable for this era; I've cited documents instead.

Counsel for DuPont

Attorney Role Firm / Office Notes
E. Anthony ("Tony") Figg Lead counsel (argued opening and closing) Rothwell, Figg, Ernst & Kurz, 1700 K Street N.W., Washington, D.C. 20006; (202) 833-5740. Earlier firm name in the complaint: Bernard, Rothwell & Brown Co-founder of the firm (now Rothwell Figg). Career-long patent litigator in pharma/biotech; lead counsel in some of the first Hatch-Waxman cases; former Chair of the ABA Section of IP Law; Fellow, American College of Trial Lawyers. Duke's archive labels him "lead counsel for Du Pont" for opening/closing.
Raymond A. Kurz Trial team (appears in transcript appearances) Rothwell, Figg, Ernst & Kurz, Washington, D.C. Listed among plaintiff's counsel on the Jan. 14, Feb. 4 and Feb. 7, 1991 transcript cover pages. Further career details not verified in sources retrieved.
Bart G. Newland Trial team / named on complaint caption as "Of Counsel" Bernard, Rothwell & Brown → Rothwell, Figg, Ernst & Kurz, Washington, D.C. Signed on the original complaint caption and appears throughout the trial transcripts. Further career details not verified in sources retrieved.
Celine M. Jiminez Trial team (associate-level appearance) Rothwell, Figg, Ernst & Kurz, Washington, D.C. Appears only on plaintiff's counsel block of the Feb. 7, 1991 transcript. Role/rank not stated in the record I retrieved.
[Name garbled] — "Clement L. Glynn" (OCR reading) Local counsel Pillsbury, Madison & Sutro, 225 Bush Street, San Francisco (caption also shows a Walnut Creek, CA 94596 address) Listed first on the complaint caption with the line "Attorneys for Plaintiff E.J. du Pont de Nemours & Company," and listed under "FOR PLAINTIFF (CONTINUED)" on the Feb. 4, 1991 transcript. The name is unreliable — it appears in a low-quality OCR of the caption; treat as unverified.
"Iris R. ___" (partial, OCR) Local counsel (second Pillsbury name) Pillsbury, Madison & Sutro, San Francisco / Walnut Creek Only a first name and initial survive the OCR. Unable to verify.
George A. Frank In-house counsel — "Senior Counsel," DuPont E.I. du Pont de Nemours & Company, Wilmington, Delaware 19898; (302) 992-2218 Listed on the complaint caption as one of the "Attorneys for Plaintiff." Legal-department signatory rather than trial counsel.

Evidence trail

Things worth flagging

  1. Don't confuse the two sides. The Feb. 4, 1991 transcript cover page also lists McCutchen, Doyle, Brown & Enersen — Lynn H. Pasahow, James B. Lewis, and Nina Srejovic. Everything I found places that team on Cetus's side, not DuPont's: Pasahow is the examiner who cross-examined DuPont's star witness Arthur Kornberg in the trial narrative ("Pasahow seemed to let him off easy"), and Lewis asserted privilege objections to questions about Roche/Pennie & Edmonds work on the reexamination — positions adverse to DuPont. Local-counsel pairing (a national patent boutique plus a San Francisco general firm) on both sides is a plausible reading of the transcript headers, but I could not retrieve a clean "FOR DEFENDANT" caption line to confirm the Pasahow team's side beyond that context.
  2. Firm-name drift. The D.C. firm appears as Bernard, Rothwell & Brown (complaint, 1989) and as Rothwell, Figg, Ernst & Kurz (1991 transcripts) — the same shop; it later became Rothwell, Figg, Ernst & Manbeck, P.C., now "Rothwell Figg." The 1700 K Street N.W. address in the complaint later became 607 14th Street N.W.
  3. Filing-date discrepancy. The case metadata gives a filing date of 1990-08-01, while the court's own September/October 1990 opinion (reported at 19 U.S.P.Q.2d 1174 (N.D. Cal. 1990); Westlaw 1990 WL 305551) states the DJ action was filed August 1, 1989, and the parallel litigation commentary says the same. Per your instruction I've treated the metadata as authoritative for the case record, but flag the one-year gap as a likely metadata error.
  4. Unverified items. I could not independently confirm (a) the Pillsbury attorney names beyond the garbled complaint OCR, (b) Raymond Kurz's, Bart Newland's, or Celine Jiminez's later careers, or (c) George A. Frank's title beyond the caption's "Senior Counsel." No PACER docket, Law360, or Reuters Legal coverage of counsel appearances was retrievable for this pre-1991 N.D. Cal. case.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel for Cetus Corporation in this 1990–91 N.D. Cal. case.

Good leads. Let me dig into the docket appearances and individual counsel bios.

Counsel of Record — Defendant Cetus Corporation

Sourcing caveat first: This is a 1989–1991 paper-era N.D. Cal. case (Judge Marilyn Hall Patel). There is no CM/ECF docket for it, so there is no electronic "counsel of record" entry to pull from PACER. The authoritative source for appearances here is the trial transcript record, which survives in the Duke University "Du Pont v. Cetus" digitized collection (DukeSpace, handle 10161/8127 and related items) — the transcripts carry a formal "APPEARANCES" block listing counsel for each side on every volume. That block is reproduced below. I did not find a separately published counsel listing in the two Westlaw-published opinions (the Dec. 3, 1990 summary-judgment ruling, 1990 WL 305551, 19 U.S.P.Q.2d 1174, is a reproduced slip opinion without a counsel caption in the copy I could retrieve).

One metadata note: your case header lists filing as 1990‑08‑01, but the district court's own opinion states "du Pont filed its declaratory judgment action on August 1, 1989," and Duke's archive also dates the collection 1989. I'd treat 1989 as the correct filing year; I'm flagging rather than silently editing it.

Outside counsel — McCutchen, Doyle, Brown & Enersen (San Francisco)

The transcript appearances block reads: "FOR DEFENDANT: MC CUTCHEN, DOYLE, BROWN & ENERSEN, THREE EMBARCADERO CENTER, SAN FRANCISCO, CALIFORNIA 94111 — BY: LYNN H. PASAHOW, ESQ.; JAMES B. LEWIS, ESQ.; NINA SREJOVIC, ESQ."

Attorney Role Firm / office Note
Lynn H. Pasahow Lead trial counsel for Cetus McCutchen, Doyle, Brown & Enersen, San Francisco (Three Embarcadero Center). Now Fenwick & West LLP, Mountain View/Silicon Valley. Duke's archive expressly labels him "lead counsel for Cetus Corporation"; he gave Cetus's opening statement and closing argument. Fenwick's bio credits him with "establishing the validity of biotech-pioneer Cetus' patents on its Nobel Prize-winning polymerase chain reaction invention against DuPont," plus Amazon 1-Click and UC (CRISPR/Cas9) work; co-author of the Federal Judicial Center's Patent Case Management Judicial Guide.
James B. Lewis Trial counsel (second chair / co-counsel) McCutchen, Doyle, Brown & Enersen, San Francisco Examined witnesses at trial (e.g., the Feb. 4, 1991 session). Bar directory bio describes a general commercial-litigation practice at McCutchen Doyle with an IP/biotechnology component; not a PCR-patent specialist of record elsewhere that I could verify. Treat the directory bio as self-reported.
Nina Srejovic Trial counsel (associate-level appearance) McCutchen, Doyle, Brown & Enersen, San Francisco Listed in the same appearances block across trial volumes. I could not independently verify her role, seniority, or post-1991 career — do not treat any descriptor beyond "appeared for Cetus" as sourced.

Firm lineage note (useful for tracing the file): McCutchen, Doyle, Brown & Enersen later became part of Bingham McCutchen, which was absorbed by Morgan Lewis in 2014. Pasahow himself moved to Fenwick & West.

In-house counsel — Cetus Corporation (Emeryville, CA)

Attorney Role Location Note
Peter D. Staple In-house counsel appearing for Cetus at trial; identified in contemporaneous press as Cetus's VP of Legal Affairs Cetus Corporation, 1400 53rd Street, Emeryville, CA 94608 Listed in the transcript appearances block immediately after the McCutchen Doyle lawyers, "BY: PETER D. STAPLE, ESQ." A BioWorld report on the later damages phase quotes "Peter Staple, Cetus' vice president of legal affairs," speaking for the company on settlement/damages strategy.
Albert P. Halluin In-house (not confirmed as counsel of record in this action) Cetus Corporation, Emeryville (then VP & Chief Intellectual Property Counsel) A 1992 Biotechnology Law Report "On the Move" item states he was "vice president and chief intellectual property counsel for Cetus… Among his accomplishments was the supervision of the patenting of the polymerase chain reaction (PCR), which was litigated successfully in the case of Cetus v. DuPont." I found no transcript or docket indication that he entered an appearance in the litigation itself; describe him as the in-house patent executive behind the asserted portfolio, not as trial counsel, unless the docket says otherwise.

Plaintiff side (for contrast, since it confirms the appearances block is reliable)

Transcripts list for DuPont: Rothwell, Figg, Ernst & Kurz (Washington, D.C.) — E. Anthony Figg, Celine M. Jiminez, Raymond A. Kurz, Bart G. Newland; Pillsbury, Madison & Sutro (San Francisco) — Clement L. Glynn (local counsel); and DuPont in-house George A. Frank and Roseanne R. Duffy. (The original 1989 complaint caption in Biotechnology Law Report shows Pillsbury Madison & Sutro and the firm then styled Bernard, Rothwell & Brown, with Figg and Newland, of counsel, plus Frank.)

What I could not verify

  • The docket number. Contemporaneous sources give the case number only in partly OCR-corrupted form (e.g., "No. " followed by garbled text in the BLR-reprinted 1989 complaint). I won't guess it.
  • Any sealed or pro hac vice filings. Nothing indicates sealed filings or additional pro hac vice counsel for Cetus; the appearances block appears to be the complete trial team.
  • Whether any Delaware or Washington counsel appeared for Cetus in related proceedings. Note that Pennie & Edmonds appears on the Hoffmann-La Roche side of the parallel PTO reexaminations — Roche was Cetus's PCR licensee, not Cetus itself, so do not attribute Pennie & Edmonds to Cetus.

Primary sources

Record id: 4683195-e-i-du-pont-de-nemours-co-v-cetus-corp · edit in Admin