Idenix Pharmaceuticals LLC et al v. Gilead Pharmasset LLC

Filing 23

REPORT AND RECOMMENDATIONS recommending GRANTING D.I. 9 MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter filed by Gilead Pharmasset LLC. Please note that when filing Objections pursuant to Federal Rule of Civil Proce dure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 7/22/2016. Signed by Judge Christopher J. Burke on 7/5/2016. (mlc)

IN THE UNITED ST ATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

IDENIX PHARMACEUTICALS LLC,
)
UNIVERSIT A DEGLI STUD I DI
)
CAGLIARI, CENTRE NATIONAL DE LA )
)
RECHERCHE SCIENTIFIQUE,
UNIVERSITE DE MONTPELLIER,
)
)

Plaintiffs,

)
)

v.

)

Civil Action No. 15-416-LPS-CJB

)

GILEAD PHARMASSET LLC,

)
)

Defendant.

)

REPORT AND RECOMMENDATION

Presently pending before the Court in this action is Defendant Gilead Pharmasset LLC's
("Gilead") "Motion to Dismiss for Lack of Subject Matter Jurisdiction[,]" filed pursuant to
Federal Rule of Civil Procedure 12(b)(l) (the "motion to dismiss"). (D.I. 9) For the reasons
discussed below, the Court recommends that the Motion be GRANTED.
I.

BACKGROUND

In order to provide context for the parties' arguments and the Court's decision with
respect to the motion to dismiss, the Court first provides a brief summary of this matter and other
relevant matters currently pending before the United States Court of Appeals for the Federal
Circuit and this Court.

A.

The Instant Action ("ldenix II'')

On May 21, 2015, Plaintiffs Idenix Pharmaceuticals LLC, Universita Degli Studi di
Cagliari, Centre National de la Recherche Scientifique and Universite de Montpellier
("Plaintiffs" or "Idenix") filed this action pursuant to 35 U.S.C. § 146 ("Section 146"). (D.I. 1)

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Idenix's Complaint seeks review of certain decisions of the United States Patent and Trademark
Office ("PTO") in Interference No. 105,981 (the "'981 Interference"), which was declared on
December 3, 2013 and which involved Idenix's United States Patent No. 7,608,600 (the "'600
patent") and Gilead's United States Patent Application Serial No. 11/845,218. (Id. at iii! 1, 33,
59)
Just a few weeks prior to the filing of Plaintiffs' Complaint, however, a panel of the
Federal Circuit had ruled that "the [Leahy-Smith America Invents Act] eliminated district courts'
subject matter jurisdiction under pre-AIA [Section] 146 to review decisions in interference
proceedings declared after September 15, 2012." Biogen MA, Inc. v. Japanese Found.for

Cancer Research, 785 F.3d 648, 660 (Fed. Cir. 2015). Accordingly, the Federal Circuit
explained that parties seeking review of a decision in an interference proceeding declared after
September 15, 2012 must file an appeal with the Federal Circuit pursuant to 35 U.S.C. § 141
("Section 141 "). Id. at 657.
In their Complaint, Plaintiffs acknowledged that the Biogen decision "may be read as
precluding this Court's [subject matter] jurisdiction" over the action, but they noted that Biogen
had not yet run its appellate course, and that they were therefore filing the instant action "to
exercise and preserve their right to pursue a Section 146 action." (D .I. 1 at 3 n.1) They
explained that they intended to "also ... file a notice of appeal for review of the '981 Interference
by the [Federal Circuit] under [Section] 141 in order to preserve that alternate avenue ofrelief in
the event that relief under Section 146 is unavailable." (Id.)

B.

The Section 141 Appeal

Plaintiffs did so the next day, filing a "Notice of Appeal" seeking review of the same

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rulings in the '981 Interference in the Federal Circuit pursuant to Section 141 (the "Section 141
appeal"). See Storer v. Clark, Appeal No. 15-1802 (Fed. Cir.); see also (D.1. 11, ex. 1; D.I. 16 at
8). On July 27, 2015, Idenix filed a motion to stay the Section 141 appeal (the "motion to stay"),
in which they requested that the Federal Circuit either: (1) stay the briefing schedule until final
resolution of Biogen, and in the event the panel decision in Biogen remained undisturbed, then
until resolution of ldenix II; (2) in the alternative, dismiss the Section 141 appeal without
prejudice to reinstatement after final resolution of Biogen and ldenix II. (D.1. 18, ex. 1) On
August 7, 2015, the Federal Circuit denied the motion to stay, (id., ex. 2), and the appeal has
since proceeded, with briefing now closed and oral arguments to be scheduled next, see Storer v.

Clark, Appeal No. 15-1802 (Fed. Cir.).
C.

ldenix I

Before the PTO declared the '981 Interference, it had declared an earlier interference,
Interference No. 105,871 (the "'871 Interference") in February 2012. (See D.I. 16 at 2-5) The
'871 Interference involves a patent and application from the same patent families as those at issue
here. (Id.) The PTO entered judgment against Idenix in January 2014, and shortly thereafter
Idenix filed an action in this Court pursuant to Section 146 seeking review of decisions in the
'871 Interference. (Id. at 4-5); see also ldenix Pharms., Inc. v. Gilead Pharmasset LLC, Civil
Action No. 14-109-LPS ("ldenix I") (D. Del.). There is no dispute that this Court has jurisdiction
over ldenix I, since the '871 Interference was declared before September 15, 2012. (D.I. 16 at 4;
D.I. 18 at 5-6)
Two additional cases are proceeding in this Court under the same discovery schedule as

ldenix I One relates to Gilead's alleged infringement of the '600 patent, while the other case was

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transferred from the United States District Court for the District of Massachusetts and is said to
involve an earlier, unrelated patent family. See ldenix Pharms., Inc. v. Gilead Sci., Inc., Civil
Action No. 13-1987-LPS, (D. Del.); Idenix Pharms., Inc. v. Gilead Sci., Inc., Civil Action No.
14-846-LPS (D. Del.); see also (D.I. 16 at 5 n.2).
Trials in all of these matters are scheduled to occur in October and December 2016. (D.I.
16 at 5)

II.

DISCUSSION
Gilead's motion to dismiss is based on the Federal Circuit's holding in Biogen. (D.I. 10;

D.I. 18) In their opposition to the motion to dismiss, Plaintiffs submitted that the Court should
defer any ruling until the Biogen appeal ran its course. (D.I. 16 at 10-12) That has now occurred,
as on August 12, 2015, the Federal Circuit denied en bane review, Biogen MA, Inc. v. Japanese
Found. for Cancer Research, slip op. (Fed. Cir. Aug. 12, 2015), and on March 21, 2016, the

Supreme Court denied Biogen MA, Inc.' s petition for a writ of certiorari, Biogen MA, Inc. v.
Japanese Found. for Cancer Research, 136 S. Ct. 1450 (2016). Pursuant to the Federal Circuit's

clear and undisturbed holding in Biogen, then, this Court lacks subject matter jurisdiction to
review the '981 Interference at issue in this case, which was declared after September 15, 2012.
Plaintiffs had asserted that if this all came to pass (i.e., if the Biogen panel decision
remained undisturbed after further appellate review), then the Court should transfer this action to
the Federal Circuit (rather than dismiss it), and that it should only do so after ldenix /has
concluded in this Court. (D.I. 16 at 12-16) They argued that allowing ldenix Ito conclude first
would be "more orderly" since that case began first, and because it will contain a much larger
record relating to common issues than that in the Section 141 appeal. (Id. at 13; see also id. at 3

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(explaining that if ldenix II is transferred to the Federal Circuit before ldenix I concludes in this
Court, "the two actions would fall out of order and, as a result, unhelpfully send to appeal this
case, with a narrower record, before the earlier case, which will have a fuller record"))
The Court does not find Plaintiffs' proposal to be appropriate in these circumstances. For
the following reasons, it instead finds Gilead's Motion to be well-taken.
With regard to Plaintiffs' request that this case be transferred to the Federal Circuit, it is
true as a general matter that where a court finds that it lacks jurisdiction, it may transfer the
action "to any other ... court in which the action or appeal could have been brought[,]" so long
as such a transfer "is in the interest of justice[.]" 28 U.S.C. § 1631; (see also D.I. 16 at 10; D.I.
18 at 5). But as Gilead points out, "Idenix has already brought a separate appeal in the Federal
Circuit from the same PTO decision within the applicable deadlines." (D.I. 18 at 5 (emphasis in
original)) And so the Court agrees that in light of the existence of the Section 141 appeal, "there
is no reason to send the Federal Circuit a second appeal challenging the exact same decision."
(Id.)

Idenix asserts that the pendency of the Section 141 appeal "does not affect the
appropriateness of a transfer" of Iden ix II because of "the uncertainty of how [the Section 141
appeal] may proceed including whether it be affected by any further proceedings in the Biogen
case." (D.I. 16 at 12 n.5) But now there is no longer any such uncertainty. Biogen has run its
full course, and the Section 141 appeal has been moving along in the Federal Circuit. Therefore,
it would be fruitless to wait to take action in this case until after Ide nix I has concluded.
Indeed, waiting to rule on this Motion until after the trial in ldenix I would appear to run
counter to the wishes of the Federal Circuit. The Section 141 appeal is proceeding accordingly

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because, in denying Idenix's motion to stay there, the Federal Circuit seems to have considered,
and rejected, Idenix's arguments regarding the proper order in which the respective

ldenix matters should move forward. (See D.I. 18 at 5-6 (citing id., ex. 1at12-13 (ldenix
arguing in its motion to stay in the Section 141 appeal that it would be premature and inefficient
to proceed with the appeal before this Court decides the instant motion to dismiss and before this
Court "sorts out how to handle [the instant matter] and its relationship to ldenix I in the first
instance")))

III.

CONCLUSION
Accordingly, the Court recommends that Gilead's motion to dismiss be GRANTED.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(l)(B), Fed. R.

Civ. P. 72(b)(l), and D. Del. LR 72.1. The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b). The failure of a party to object to legal conclusions may result in the loss
of the right to de novo review in the district court. See Henderson v. Carlson, 812 F.2d 874, 87879 (3d Cir. 1987); Sincavage v. Earhart, 171 F. App'x 924, 925 n.1 (3d Cir. 2006).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R.
Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website,
located at http://www.ded.uscourts.gov.

Dated: July5,2016
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE

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