Phigenix, Inc. v. Genentech, Inc.

Filing 237

ORDER GRANTING 229 GENENTECH'S MOTION FOR LEAVE TO FILE MSJ. Signed by Judge Beth Labson Freeman on 8/8/2016. (blflc3S, COURT STAFF) (Filed on 8/9/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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PHIGENIX, INC.,

Case No. 15-cv-01238-BLF

Plaintiff,
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v.

ORDER GRANTING GENENTECH'S
MOTION FOR LEAVE TO FILE MSJ

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GENENTECH INC,

[Re: ECF 229]

Defendant.

United States District Court
Northern District of California

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Before the Court is Genentech’s administrative motion for leave to file a summary

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judgment motion without the motion counting against the Court’s one motion for summary

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judgment allowance. ECF 229. Genentech seeks to file a 12 page motion for summary judgment

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on the grounds that the asserted patent is invalid because (1) the written description for the ’534

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patent does not support the broad “any composition claim” Phigenix has asserted and 2) the

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written description in the 2005 application to which Phigenix claims priority does not support the

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claimed “method of treating a breast condition,” so the asserted claims are not entitled to that

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priority date, and therefore the accused product anticipates because it was in public use more than

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a year before the ’534 patent’s 2010 filing date. Id.

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Phigenix opposes the request because it believes Genentech’s motion necessarily involves

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disputed issues of fact and therefore will only serve to burden the parties and the Court. ECF 230.

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In the alternative, Phigenix requests that the Court preclude Genentech from (1) using expert

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declarations with the motion as expert discovery has not yet commenced, (2) raising any issues

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under 35 U.S.C. § 112 in any later motion, and (3) decreasing the page count for any subsequent

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summary judgment motion by 75% of the pages used in the proposed motion (i.e. if Genentech

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files a 12 page motion, any subsequent summary judgment motion will be limited to 16 pages).

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After reviewing the parties’ briefing, the Court GRANTS Genentech’s motion for leave to

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file an early summary judgment motion. The Court SETS the page limits for the early summary

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judgment motion to 12 pages for the opening brief, 12 pages for the opposition brief, and 7 pages

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for the reply brief. Genentech may not raise any issues raised in this summary judgment motion in

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a later motion for summary judgment and the Court reduces the page count for any later filed

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summary judgment motion to 20 pages for the opening and opposition briefs and 12 pages for the

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reply brief.

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United States District Court
Northern District of California

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IT IS SO ORDERED.
Dated: August 8, 2016
______________________________________
BETH LABSON FREEMAN
United States District Judge

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