Phigenix, Inc. v. Genentech Inc.
| Decision Date | 07 June 2019 |
| Docket Number | Case No. 15-cv-01238-BLF |
| Parties | PHIGENIX, INC., Plaintiff, v. GENENTECH INC, Defendant, v. CARLTON DEWITT DONALD, Third Party Defendant. |
| Court | U.S. District Court — Northern District of California |
[Re: ECF 451]
Before the Court is Defendant Genentech Inc.'s ("Genentech") motion for award of attorney fees against third-party Defendant Dr. Carlton DeWitt Donald ("Dr. Donald") and for determination of the amount of reasonable fees owed to Genentech, pursuant to the Court's order granting fees against Plaintiff Phigenix, Inc. ("Phigenix") ("Fees Order", ECF 442). Mot., ECF 451. For the reasons that follow, the Court finds that Genentech is not entitled to fees from Dr. Donald and that Genentech is entitled to $1,756,764.49 in fees from Phigenix. The motion is thus GRANTED IN PART AND DENIED IN PART.
The Court provided a detailed factual background of this case in its Fees Order from August 13, 2018. Phigenix, Inc. v. Genentech, Inc., No. 15-CV-01238-BLF, 2018 WL 3845998, at *1-*3 (N.D. Cal. Aug. 13, 2018) (). Because many of those facts are relevant to resolving a portion of the instant motion, the Court recounts them again here, and then discusses the relevant details of the Fees Order.
Phigenix is a pharmaceutical and biomedical research company founded in 2007 by Dr. Donald, who is a named inventor on numerous issued patents and pending patent applications, including U.S. Patent No. 8,080,534 ("the '534 patent"). First Am. Compl. ("FAC") ¶¶ 1, 9, ECF 21. The '534 patent is titled "Targeting PAX2 for the Treatment of Breast Cancer." Ex. A to FAC ("'534 patent"), ECF 21-1. Phigenix brought this action against Genentech alleging infringement of the '534 patent based on Genentech's drug Kadcyla, a drug targeting a type of metastatic breast cancer. See generally FAC.
In 1998, Genentech obtained FDA approval of Herceptin (trastuzumab)1 for the treatment of HER2+ breast cancer. Weiner Expert Report in Supp. of Mot. for Summ. J. ¶¶ 39, 120, ECF 349-1. At that time, Herceptin also received approval as a "first-line treatment in combination with the taxane paclitaxel." Id. ¶ 120. According to Genentech, it then began working on a next-generation treatment: conjugates of Herceptin (trastuzumab) and the maytansinoid DM1, which were disclosed in a Genentech patent application that published in 2001 ("'244 application," ECF 37-6). ECF 400 at 2. Those conjugates work with the precise molecule that eventually would be approved as Kadcyla. Id.
In 2013, the FDA approved Kadcyla. Ex. 3 to Kreeger Decl. in Supp. of Mot. for Summ. J. ("Kadcyla Label"), ECF 348-3. The approved indication was for patients previously treated with Herceptin and a taxane. Id. at 1. Thereafter, in June 2013, Phigenix sent multiple letters signed by Dr. Donald to Genentech about securing "patent protection" for Kadcyla by offering to negotiate a license for Phigenix's patent portfolio. Exs. A and B to Schwartz Decl. in Supp. of Mot. to Dismiss, ECF 37-4, 37-5. Dr. Donald included a diagram hypothesizing that trastuzumab-DM1 conjugates affect a signal pathway, resulting in the inhibition of PAX2 in breast cancer cells. Dr. Donald asserted that this infringed Phigenix's patent. See Ex. B to Schwartz Decl. in Supp. of Mot. to Dismiss; Ex. 3 to Ackerman Decl. in Opp'n to Mot. for Sanctions, ECF 215-3.
In September 2013, Genentech declined the offer and stated that its '244 application discloses "trastuzumab-DM1 conjugates . . . for the treatment of breast cancer" and was published more than four years before the priority date of the earliest-filed application in Phigenix's patent portfolio. Ex. D to Schwartz Decl. in Supp. of Mot. to Dismiss, ECF No. 37-7. In November 2013, Genentech sent an email letter to Phigenix stating that if Phigenix's patent claims cover "direct or indirect inhibition of PAX2 for the treatment of cancer," they would be inherently anticipated by the '244 application. Ex. F to Schwartz Decl. in Supp. of Mot. to Dismiss, ECF 37-9.
On January 31, 2014, Phigenix initiated its suit against Genentech in the United States District Court for the Northern District of Georgia. ECF 1. The Northern District of Georgia granted Genentech's motion to transfer the action to this District. ECF 66.
In June 2014, Genentech told Phigenix that the complaint warrants Rule 11 sanctions; Phigenix disagreed. Mot. for Sanctions at 5, ECF 198; Opp'n to Mot. for Sanctions, ECF 214. On May 10, 2016, Genentech filed its motion for sanctions under Rule 11. ECF 198. The parties submitted supplemental briefing after Phigenix provided results on its testing of Kadcyla. On October 31, 2016, this Court found that Phigenix had "properly relied on scientific, peer-reviewed articles to formulate its infringement theory" and that Genentech had not demonstrated how Phigenix's complaint was "baseless." Sanctions Order at 7, ECF 290. The parties' briefing on Phigenix's test results did not compel a different conclusion. Id. In declining to take a deep dive into the scientific articles submitted, the Court noted that weighing the value of different experimental studies without the aid of experts would not assist the Court in deciding the sanctions motion. Id. Furthermore, the Court found that Genentech had not shown that the '244 application inherently anticipates the '534 patent for the purpose of the sanctions motion. Id. at 11. Nevertheless, the Court recognized the "potentially significant weaknesses in Phigenix's theory of infringement." Id. As such, this Court allowed Genentech to request Rule 11 sanctions or extraordinary case fees under § 285 in the event that Genentech obtained judgment in its favor. Id. at 11-12.
On September 22, 2016, Genentech filed its first motion for summary judgment. First Mot. for Summ. J., ECF 257. The parties disputed whether the '534 patent was entitled to the October 14, 2005 priority date. The '534 patent is a continuation-in-part of U.S. Application No. 12/090,191 ("'191 application"), which is a national stage entry of WO 2007/047512 ("PCT application"). Exs. 2, 3 to Chivvis Decl. in Supp. of First Mot. for Summ J., ECF 258-2, 258-3. The PCT application claims priority to U.S. Provisional Application No. 60/726,921, filed on October 14, 2005 (the "2005 provisional application"). Exs. 3, 4 to Chivvis Decl., ECF 258-3, 258-4. On February 24, 2017, the Court found that no reasonable trier of fact would find adequate written description support in the 2005 provisional application for the asserted claims. First Summ. J. Order 12-19, ECF 327. As such, Phigenix lost the 2005 priority date for the asserted '534 patent.
The Court further addressed Genentech's argument that the asserted claims are anticipated by the use of Kadcyla in clinical trials, which were made public in 2007. See id. at 23-24. Phigenix asserted that there was a factual dispute as to whether the public use necessarily met the claim limitations. Id. The Court agreed that there was a genuine issue of material fact as to whether Kadcyla's public use in 2007 anticipated the asserted claims. Id. at 24. The Court noted that one of the documents submitted by Genentech states that "[i]n addition to Trastuzumab, all patients with objective responses had previously been treated with paclitaxel, docetaxel, and/or vinorelbine." Id. (). While paclitaxel and docetaxel are taxanes, vinorelbine is not. Id. Given the disjunctive in the list of "paclitaxel, docetaxel, and/or vinorelbine," the Court found that it was possible that the patients of the clinical trials received vinorelbine but not either of the two taxanes. Id. On this basis, the Court ruled that there was enough evidence for the trier of fact to find that the public use and the asserted infringing methods are not identical. Id.
Thereafter, Genentech filed a second motion for summary judgment of non-infringement and invalidity on June 9, 2017. Second Mot. for Summ. J., ECF 347. During a May 23, 2017 deposition, Phigenix's expert Dr. Richard Pestell testified that his infringement opinion was limited to patients who had previously been treated with Herceptin and a taxane and nothing else.Id. at 5 (citing Ex. 2 to Kreeger Decl. at 51:5-12, 53:20-25, 53:14-19, ECF 348-2). According to Genentech, only in an email dated May 31, 2017, did Phigenix restrict its infringement theory to apply to patients who had previously received trastuzumab and a taxane "and nothing else." Second Mot. for Summ. J. 10 (). Genentech moved to strike Dr. Pestell's "new" infringement opinion.
On August 18, 2017, the Court granted in part Genentech's second motion for summary judgment. Second Summ. J. Order, ECF 391. The Court noted that "Phigenix only narrowed its infringement theory in response to the Court's [first] summary judgment order finding that the '534 patent was not entitled to an earlier priority date." Id. at 16. But Phigenix neither moved to amend its infringement contentions nor notified Genentech of the new infringement theory. Id. As such, the Court sustained Genentech's objection and struck Dr. Pestell's infringement opinion. Id. Without evidence of infringement, the Court granted summary judgment of no infringement. Id. In addition, the Court granted summary judgment of no induced infringement for lack of specific intent due to the absence of evidence of Genentech's intent to induce infringement as to the narrow patient subpopulation who previously received "trastuzumab and a taxane and nothing else" under Phigenix's newly disclosed infringement theory. Id. at 9-14. Acc...
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