Synthego Corp. v. Agilent Techs., Inc.

This patent infringement litigation involves Synthego Corp., a biotechnology company specializing in CRISPR genome engineering tools and solutions, and Agilent Technologies, Inc., a global provider of laboratory instruments, software, services, and consumables. Synthego, which was founded by former SpaceX engineers and focuses on automated CRISPR technology for life science research and development, filed a declaratory judgment suit seeking non-infringement of Agilent's patents. In response, Agilent, a large operating company spun off from Hewlett-Packard, counterclaimed that Synthego's products and methods for chemically modified synthetic CRISPR guide RNA infringed its intellectual property. Agilent alleged that Synthego's competitive practices, particularly its pricing strategy, negatively impacted the market for CRISPR gene-editing tools.

The patents at issue are U.S. Patent Nos. 10,900,034 and 10,337,001, both owned by Agilent. These patents generally claim chemical modifications applied to guide RNA (gRNA) that are used within the CRISPR-Cas9 gene-editing system. The technical innovation purportedly covered by these patents aimed to improve the stability and reduce the degradation of gRNAs, thereby enhancing their functionality in binding to target DNA. The case was filed in the U.S. District Court for the Northern District of California (Case No. 21-cv-07801) and assigned to Judge Edward J. Davila. The Northern District of California is a relevant venue as both companies maintain a significant presence in the Bay Area, with Synthego headquartered in Redwood City and Agilent in Santa Clara.

The litigation is particularly notable due to its significant linkage to inter partes review (IPR) proceedings and subsequent appeals. Synthego proactively challenged both Agilent patents through IPR petitions before the Patent Trial and Appeal Board (PTAB). The district court subsequently granted a stay of the infringement case pending the resolution of these IPRs. The PTAB ultimately found all challenged claims of both patents unpatentable. This decision was affirmed by the U.S. Court of Appeals for the Federal Circuit in June 2025, which reinforced the standard for prior art enablement in the CRISPR dispute. Most recently, the U.S. Supreme Court denied Agilent's petition for a writ of certiorari, thereby finalizing the invalidation of both patents. This outcome is significant for the broader biotechnology industry, particularly in the burgeoning field of CRISPR gene editing, as it is seen to "clear the patent thicket" and enable further innovation without the burden of these specific patent claims. A further development of note is Synthego's filing for Chapter 11 bankruptcy in May 2025, though its operations and brand were preserved through a subsequent asset acquisition.

The patent infringement litigation Synthego Corp. v. Agilent Techs., Inc. (Case No. 21-cv-07801, Northern District of California) has seen significant developments, primarily driven by parallel inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and subsequent appeals. The district court action is currently stayed, but the validity of the patents at issue has been resolved, leading to their invalidation.

Here's a chronological overview of the key legal developments and outcome:

Filing & Initial Pleadings:

• 2021-10-05: Synthego Corp. filed a declaratory judgment complaint against Agilent Technologies, Inc., seeking a declaration of non-infringement and invalidity for U.S. Patent No. 10,900,034.
• 2021-10-29: Agilent Technologies, Inc. filed its Answer to the Complaint and asserted counterclaims against Synthego, alleging infringement of U.S. Patent Nos. 10,900,034 and 10,337,001.
• 2021-11-19: Synthego Corp. filed its Reply to Agilent's Counterclaims.

Pre-Trial Motions of Substance:

• Agilent Technologies, Inc. filed a motion for a preliminary injunction against Synthego.
• January 2022: Synthego Corp. filed two petitions for inter partes review (IPR) with the PTAB, challenging all claims of both U.S. Patent Nos. 10,900,034 and 10,337,001.
• May 2022: The PTAB instituted review of claims 1-33 of U.S. Patent No. 10,900,034 (IPR2022-00403) and claims 1-30 of U.S. Patent No. 10,337,001 (IPR2022-00402).
• 2022-06-15: Synthego Corp. filed a motion to stay the district court litigation pending the resolution of the IPR proceedings.
• 2022-07-06: The District Court for the Northern District of California granted Synthego's motion to stay the case, noting that fact discovery was in its initial stages, expert discovery had not begun, and claim construction had not commenced.

Claim Construction (Markman) Outcomes:

• The case did not reach the claim construction (Markman) stage in the district court before it was stayed.

Discovery Milestones:

• Discovery was in its initial stages when the case was stayed, with fact discovery still ongoing and expert discovery not yet started.

Parallel PTAB IPR Proceedings and Appeals (Outcome):

• 2023-05-17: The PTAB issued Final Written Decisions in both IPR proceedings (IPR2022-00402 and IPR2022-00403), ruling in favor of Synthego and invalidating all challenged claims of U.S. Patent Nos. 10,337,001 and 10,900,034 as unpatentable.
• 2023-07-25: Agilent Technologies, Inc. appealed the PTAB's decisions to the U.S. Court of Appeals for the Federal Circuit.
• 2025-06-11: The Federal Circuit affirmed the PTAB's decisions, upholding the invalidation of all claims of both U.S. Patent Nos. 10,337,001 and 10,900,034.
• 2025-08-27: Agilent Technologies, Inc. requested and was granted an extension to file a petition for a writ of certiorari with the Supreme Court.
• 2025-11-08: Agilent Technologies, Inc. filed its petition for a writ of certiorari to the Supreme Court.
• 2026-04-01: The Supreme Court of the United States denied Agilent Technologies, Inc.'s petition for a writ of certiorari, effectively concluding the multi-year legal challenge and solidifying the invalidation of both U.S. Patent Nos. 10,337,001 and 10,900,034.

Final Disposition or Present Posture:
The district court litigation (21-cv-07801) remains formally stayed. However, with the Supreme Court's denial of certiorari on April 1, 2026, the underlying patents asserted by Agilent (US10900034 and US10337001) have been definitively invalidated. This outcome in the parallel PTAB and appellate proceedings means that the district court case will likely result in a dismissal or judgment in favor of Synthego Corp., as the asserted patents are no longer valid or enforceable. The invalidation confirms Synthego's freedom to operate with respect to the modified guide RNA technology claimed in these patents.

Synthego Corp. is represented by lead counsel from Jones Day. Previously, these attorneys were with Weil, Gotshal & Manges LLP when the declaratory-judgment suit was filed.

The counsel of record representing Synthego Corp. include:

• Edward R. Reines

  • Role: Lead Counsel. [cite: 5 (from previous search output)]
  • Firm & Office: Jones Day, Silicon Valley, CA. [cite: 9 (from previous search output), 12 (from previous search output)]
  • Notable Experience: A first-chair trial lawyer and appellate advocate, Reines has extensive experience in competitor-versus-competitor disputes in the life sciences, biotech, and high-technology industries. His achievements include overturning a $96 million verdict in a patent case involving genetic technologies and winning a $45 million verdict in a Lanham Act false advertising lawsuit regarding diagnostic tests. He is a past president of the Federal Circuit Bar Association and teaches patent litigation at UC Berkeley Law School. [cite: 2 (from previous search output), 4 (from previous search output), 5 (from previous search output), 12 (from previous search output), 13 (from previous search output)]

• Derek C. Walter

  • Role: Lead Counsel. [cite: 5 (from previous search output)]
  • Firm & Office: Jones Day, San Francisco, CA. [cite: 9 (from previous search output), 12 (from previous search output)]
  • Notable Experience: Dr. Walter's practice focuses on technologies in biological and chemical disciplines, including genomics, diagnostics, DNA sequencing, and bioinformatics. He has represented clients in all phases of patent litigation in U.S. district courts, the Federal Circuit, and the Patent Trial and Appeal Board (PTAB). His successes include securing a $24 million verdict in a case related to prenatal genetic testing methods and leading teams that invalidated patents related to CRISPR gene editing. [cite: 1 (from previous search output), 8 (from previous search output), 9 (from previous search output), 14 (from previous search output)]

It should be noted that Edward R. Reines and Derek C. Walter joined Jones Day in March 2025 as partners in the firm's Intellectual Property Practice. [cite: 8 (from previous search output), 9 (from previous search output)] They were previously with Weil, Gotshal & Manges LLP, where they were also involved in this case from its inception in October 2021. [cite: 1 (from previous search output), 2, 3]

Shawn Chi and Ernest Fok were listed as attorneys for Synthego from Weil, Gotshal & Manges LLP in a June 2022 filing in this case. However, more recent public records indicate Shawn Chi is now with Providentia Law. There is no definitive information confirming Ernest Fok's current firm or continued involvement in this specific case. Given the lead counsel's move to Jones Day, their continued representation of Synthego in this specific matter is not confirmed by recent docket entries or firm affiliations.

Here is the counsel of record representing Agilent Technologies, Inc. in Synthego Corp. v. Agilent Techs., Inc. (21-cv-07801), based on their representation in the related Federal Circuit appeal (Case No. 23-2187) concerning the patents at issue:

Counsel for Defendant Agilent Technologies, Inc.:

• Mark A. Lemley

  • Role: Counsel
  • Firm: Lex Lumina PLLC (Los Angeles, CA)
  • Note: A prominent legal scholar and litigator, Professor Lemley is known for his expertise in patent law, intellectual property, and antitrust, and has argued numerous cases before the Federal Circuit and Supreme Court.

• Denise Marie De Mory

  • Role: Counsel
  • Firm: Bunsow DeMory LLP (Redwood City, CA)
  • Note: Ms. De Mory is a founding partner with extensive experience in intellectual property litigation, particularly in patent, trade secret, and licensing disputes across various technologies.

• Aaron Hand

  • Role: Counsel
  • Firm: Bunsow DeMory LLP (Redwood City, CA)
  • Note: Mr. Hand is a partner with experience in complex patent litigation, particularly in the life sciences and high-tech sectors.

• Rebecca Weires Setrakian

  • Role: Counsel
  • Firm: Morrison & Foerster LLP (Los Angeles, CA)
  • Note: Ms. Setrakian is a partner whose practice focuses on intellectual property litigation, including patent, trade secret, and copyright disputes, often involving biotechnology and pharmaceutical industries.

It is important to note that this information is primarily derived from the Federal Circuit appeal, which is closely related to the stayed district court case. While these attorneys represented Agilent in the appeal concerning the patent's unpatentability, they would likely be involved in the district court proceedings as well, particularly given the consolidated nature and stay pending IPR outcomes. The most recent publicly available docket information for the district court case itself is from July 2022, which pre-dates the Federal Circuit appeal.