In Ossifi-Mab LLC v. Amgen Inc., No. 1:23-cv-10861, Chief Magistrate Judge Cabell ruled on competing motions to compel, granting only Plaintiff's motion as to a single license agreement and denying the remainder of both motions.
Plaintiff sought the production of three categories of documents: third-party license agreements, negotiation communications, and previously-redacted information related to an unaccused Amgen drug. First, Plaintiff argued that seven third-party license agreements are relevant to damages, and the Court found that only one bears on subject matter that could render it comparable for a hypothetical negotiation analysis, and thus ordered only that single agreement be produced. Second, Plaintiff sought negotiation communications between Defendant and a third party. The Court credited Defendant's assertion that it had produced the final agreements, and it would be significantly burdensome to produce the requested communications from over 20 years ago, and thus denied relief in this respect. Third, Plaintiff sought production of redacted information regarding an unaccused drug that can be marketed together with the accused drug. At the hearing, Defendant represented that the two drugs were separately prescribed and sold, and all redactions concerned the unaccused drug alone. The Court credited this representation and denied the motion in this respect.
Defendant's motion to compel sought documents related to a small molecule drug that Plaintiff is developing and might compete with the accused product, arguing that specific information like epitope binding was relevant to determine whether Plaintiff's product would compete. In opposition, Plaintiff asserted that such detailed trade secret information was not necessary to make such a determination. The Court found that Plaintiff had already produced information related to the product's mechanism of action and the more specific information requested by Defendant would not be proportional to the needs of the case.
The Court thus granted Defendant's motion to compel as to a single comparable license agreement and denied the parties motions in all other respects.
In Hanna v. CAB Technology, Inc., No. 1:24-cv-12938, Magistrate Judge Levenson denied Plaintiff's application to proceed without prepaying fees. Acting pro se, Plaintiff applied to proceed in forma pauperis before the case was transferred to this District.
The Court here denied Hanna's request due to incomplete financial disclosures, including missing details about the past gross monthly wages as well as the amount and source of the compensation payments. Hanna was given until January 3, 2025, to either pay the fee or resubmit a complete application, noting that failure to comply may result in dismissal.
In Omni Continuum LLC v. NKT Photonics Inc., et.al., No. 1:24-cv-11007, Judge Talwani denied Defendants' motion to dismiss for failure to state a claim of infringement as to one asserted patent.
In a prior case Plaintiff had originally asserted, and then removed via amendment, a claim for infringement of the patent at issue here. Plaintiff later filed the instant suit and amended its original complaint after Defendant moved to dismiss. Defendant moved to dismiss the amended complaint, and the Parties' dispute centered around whether Plaintiff had sufficiently identified a key claim limitation to satisfy the pleading requirement.
First, the Court declined Defendant's invitation to consider whether Plaintiff's infringement theory had changed between its original and amended complaints or to accept as true statements in the original complaint for purposes of evaluating the amended complaint, observing that the amended complaint supersedes the original. The Court acknowledged an exception where courts in other circuits accepted as true allegations in original complaints that directly contradicted those in an amended complaint, finding that while it is unclear whether such an exception applies in the First Circuit, whether to consider such contradictory allegations would be discretionary and declining to exercise discretion.
Second, the Court considered the parties' competing constructions for a key claim term that is not a term of art, finding that the briefing before it did not render the plaint and ordinary meaning of the disputed claim so clear as to obviate claim construction proceedings and thus construed the term in Plaintiff's favor for purposes of resolving the motion.
The Court concluded that Plaintiff's complaint, when construed in its favor, sufficiently alleged infringement and placed Defendants on notice of the claims. The Court thus denied the motion to dismiss without prejudice, allowing Defendants to renew their challenge after formal claim construction.
In Enanta Pharmaceuticals, Inc. v. Pfizer, Inc., No. 1:22-cv-10967, Judge Casper granted Defendant's motion for summary judgment of invalidity, and denied Plaintiff's motion for summary judgment of infringement and the Parties' motions to exclude expert testimony.
Following a Markman hearing, Plaintiff moved for partial summary judgment of infringement. Defendant filed a cross-motion for summary judgement of invalidity. Both parties also moved to exclude certain opinions of the parties' proffered experts.
Defendant contended the asserted patent was invalid because: (1) the asserted patent was not entitled to a priority date of its provisional application; (2) the asserted patent was anticipated by the accused compound; and/or (3) the asserted patent and its provisional application did not enable the patent's claims.
Regarding validity, the Court analyzed the claims and agreed with Defendant that the asserted patent cannot claim the benefit of its provisional application because the former improperly introduced new matter and broadened the scope of the patent in contravention of 35 U.S.C. § 112 by expanding the definition of a claim term. Although Plaintiff argued that the inconsistent definition was only a typographical error, the Court disagreed, noting that Plaintiff's own expert conceded that multiple definitions were possible, making the error not expressly obvious. The Court thus found that the asserted patent was not entitled to claim priority to the provisional application.
The Court next noted that because it is undisputed that the patented subject matter was publicly disclosed after the provisional application but before the application that led to the asserted patent was filed, the asserted patent is anticipated under AIA 35 U.S.C. §§ 102.
Accordingly, the Court granted Defendant's motion for summary judgment on invalidity, and denied Plaintiff's motion for summary judgment of infringement and the Parties' motions to exclude expert testimony as moot.
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