Medimmune, LLC v. PDL Biopharma, Inc.

Filing 478

ORDER by Magistrate Judge Howard R. Lloyd granting 405 defendant's Motion for Protective Order. 4/6/2010 hearing is vacated. (hrllc2, COURT STAFF) (Filed on 4/1/2010)

1 2 3 4 5 6 7 8 9 10 NOT FOR CITATION IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION MEDIMMUNE, LLC, Plaintiff, v. PDL BIOPHARMA, INC. Defendant. / No. C08-05590 JF (HRL) ORDER GRANTING DEFENDANT'S MOTION FOR PROTECTIVE ORDER [Re: Docket No. 405] *E-FILED 04-01-2010*

United States District Court

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For the Northern District of California

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Plaintiff MedImmune, LLC ("MedImmune") seeks a declaration of contractual rights re a 1997 agreement ("License Agreement") with defendant PDL Biopharma ("PDL"), as well as a declaration of noninfringement and invalidity as to the subject PDL patents. PDL accuses MedImmune of breach of contract and willful infringement. PDL now moves for a protective order against a Fed. R. Civ. P. 45 subpoena duces tecum served by MedImmune on nonparty Genzyme Corporation ("Genzyme"). The subpoena indisputably was served one week after the January 29, 2010 discovery cutoff. PDL argues that the subpoena is untimely and, therefore, beyond the bounds of permissible discovery.1 MedImmune opposes the motion. The matter is deemed suitable for determination without oral argument, and the April 6, 2010 hearing is vacated. Civ. L.R. 7-1(b). Upon consideration of the moving and responding papers, this court grants the motion.

PDL says that it has also filed a motion to quash the subpoena in the District of Massachusetts, the court from which the subpoena issued.
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MedImmune first contends that because the Genzyme subpoena is directed to a nonparty, the requested discovery is not subject to the January 29, 2010 discovery cutoff and may be sought at any time before trial. Courts are split on this issue. Nevertheless, this court finds that the better view (espoused by the majority of jurisdictions) is that, with certain exceptions not present here, Fed. R. Civ. P. 45 subpoenas constitute pretrial discovery that must be served within the specified discovery period. See, e.g., Dreyer v. GACS, Inc., 204 F.R.D. 120, 122 (N.D. Ind. 2001) ("Most courts hold that a subpoena seeking documents from a thirdparty under Rule 45(a)(1)(C) is a discovery device and therefore subject to a scheduling order's general discovery deadlines."); Integra Lifesciences I, Ltd. v. Merck KGaA, 190 F.R.D. 556, 561 (S.D. Cal. 1999) ("Case law establishes that subpoenas under Rule 45 are discovery, and must be utilized within the time period permitted for discovery in a case."); NSight, Inc. v. PeopleSoft, Inc., No. C04-003836, 2006 WL 988807, *3 (N.D. Cal., Apr. 13, 2006) (noting that California courts and a majority of other jurisdictions hold that Fed. R. Civ. P. 45 discovery is pretrial discovery that must be served within the designated discovery period). Accordingly, the Genzyme subpoena is untimely. The only remaining question is whether there is good cause to excuse MedImmune's tardiness. In oversimplified terms, the Genzyme subpoena seeks documents (e.g., all lab notebooks, files, patent applications, samples, and like material) pertaining to Genzyme's humanized antibody program, especially (a) documents once in the possession of Gordon P. Moore or Clyde W. Shearman, (b) documents concerning the antibodies BMA031, 2H1, or B6.2, and (c) any document dated before January 1, 1991 that refers to a humanized antibody. (See Huang Decl., Ex. 1). In sum, the subpoena seeks discovery re potential prior art with respect to a claimed February 1989 patent priority date. Claiming that prior deposition discovery was unfruitful with respect to the identification of prior art asserted by Alexion Pharmaceuticals, Inc. in a prior patent suit against PDL, MedImmune says that it simply did not realize the importance of Genzyme's antibody humanization efforts or the need to subpoena Genzyme until after MedImmune reviewed certain handwritten notes produced by PDL on the very last day of the discovery period. PDL claims 2

United States District Court

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For the Northern District of California

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that those notes are confidential, and this court finds that a detailed discussion of their contents is unnecessary. Suffice to say that, according to MedImmune, a particular reference in those notes prompted a further investigation re Genzyme which reportedly led MedImmune to discover (a) Genzyme's 1989 purchase of a company called Integrated Genetics (including Integrated Genetic's research on antibody humanization); and (b) the existence of an April 1989 article by Integrated Genetic's Gordon Moore. MedImmune, however, has not convincingly explained how the reference in the handwritten notes relates to Moore or Integrated Genetics. The record presented seems to suggest that the handwritten notes actually refer to different prior art -- all of which PDL contends MedImmune has known about since at least May 2009. (Maurer Decl. Ex. C at 6-7; Ex. D at 178:2-180:4). Moreover, MedImmune served its invalidity contentions in May 2009 (eight months before the discovery cutoff), which identified a December 15, 1991 article by Shearman (on which Moore is also identified as an author) discussing the design and construction of humanized antibody BMA031, one of the subjects of the Genzyme subpoena. MedImmune now argues that it had no reason to investigate the research underlying the December 15, 1991 Shearman article because that article was cited with respect to a different 1995 priority date (as opposed to the February 1989 claimed priority date now in question). MedImmune also contends that, in view of a different February 1991 article by Shearman, Moore (and others), MedImmune had little reason to believe that humanization of antibody BMA031 was in progress in early 1989. Yet, in connection with the subpoena at issue, MedImmune provided the December 15, 1991 Shearman article to Genzyme (albeit, describing it as an article by Moore) for the apparent purpose of "helping [Genzyme] to focus your search" to locate the requested lab notebooks. (Huang Reply Decl., Ex. 1). So, although MedImmune argues that Genzyme's reported significance was a mystery that was only recently unraveled, MedImmune has not convincingly demonstrated that the failure to subpoena Genzyme sooner was due to the fact that PDL produced certain notes on the last day of discovery. There is palpable prejudice to PDL. PDL argues that because the time for discovery and the exchange of expert reports has passed, PDL will not have the opportunity to conduct 3

United States District Court

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For the Northern District of California

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"responsive discovery," including, apparently, additional fact discovery and the preparation of additional expert reports. MedImmune contends that there will be no prejudice to PDL because any production by Genzyme is likely to be "small," and Judge Fogel has indicated that trial is unlikely to proceed on the previously set June 2010 date. MedImmune's assertions as to the volume of Genzyme's anticipated production are speculative. Discovery is closed and the period for the exchange of expert reports and rebuttal reports has passed. At this juncture, this court declines to permit MedImmune to proceed with discovery that could have been served sooner and which could now potentially interfere with Judge Fogel's management of this case. Accordingly, it is ordered that PDL's motion for protective order is GRANTED. Dated: April 1, 2010 HOWARD R. LLOYD

United States District Court

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For the Northern District of California

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UNITED STATES MAGISTRATE JUDGE

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5:08-cv-05590-JF Notice electronically mailed to: Aaron P. Maurer Aaron Y Huang Dana K Powers David Isaac Berl [e-mail] [e-mail] [e-mail] [e-mail] [e-mail], [e-mail] [e-mail]

David Isaac Gindler

Gerson Avery Zweifach Gregory Hull

[e-mail], [e-mail]

Jeffrey E. Faucette [e-mail], [e-mail], [e-mail], [e-mail] Jessamyn Sheli Berniker Paul B. Gaffney [e-mail]

United States District Court

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For the Northern District of California

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[e-mail] [e-mail] [e-mail], [e-mail]

Raymond Angelo LaMagna Vernon Michael Winters

Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court's CM/ECF program.

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