In Re Application of Oncology Foundation v. Avanza Development Services, LLC et al

Filing 3

MEMORANDUM OPINION AND ORDER re: 1 Petition for Subpoena for Documents for Use Before European Patent Office and Request for Expedited Consideration filed by In Re Application of Oncology Foundation. Signed by Judge Paula Xinis on 5/30/2017. (kns, Deputy Clerk) Modified on 6/1/2017 (kns, Deputy Clerk). Modified on 6/1/2017 (kns, Deputy Clerk).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
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ONCOLOGY FOUNDATION,
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Petitioner,
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v.

Civil Action No. PX 17-1445
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AVANZA DEVELOPMENT SERVICES,
LLC et al.,

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Respondents.
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MEMORANDUM OPINION & ORDER

Pending before the Court is Oncology Foundation’s Ex Parte Petition for Subpoena for

Documents for Use Before the European Patent Office. ECF No. 1. Oncology Foundation is
seeking to revoke a patent held by the Johns Hopkins University involving an anti-cancer agent,
3-Halopyruvate and related compounds. Oncology Foundation wishes to subpoena documents
generated by Avanza Development Corporation, LLC (“Avanza Development”), a contract
research agency, and Steven Godin, Ph.D (“Dr. Godin”) that Oncology Foundation believes will
support patent revocation because, in essence, Johns Hopkins has misrepresented the efficacy
and safety of the drug in question to obtain the patent in the first instance. For the reasons set
forth below, the Court GRANTS Oncology Foundation’s Motion.
The Court’s authority to determine whether the subpoena shall issue arises from 28
U.S.C. § 1782(a), which provides “federal-court assistance in the gathering of evidence for use in
foreign tribunals.” Intel Corp. v. Advanced Micro Devices, 542 U.S. 241, 247 (2004). A federal
court may grant such assistance where (1) the person from whom the discovery is sought resides
or is found in the district of the district court to which application is made, (2) the discovery is
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for use in a proceeding before a foreign tribunal, and (3) the application is made by a foreign or
international tribunal or “any interested person.” 28 U.S.C. § 1782(a). Based on the proffered
evidence contained within Oncology Foundation’s petition, the Court finds that Oncology has
met each of these requirements. The documents are sought from a corporation and individual
found in Gaithersburg, Maryland, where Avanza Development’s research facilities are located;
they are to be used in proceedings before the European Patent Office; and the application is made
by an “interested person,” namely a party to the litigation. See Intel, 542 U.S. at 256 (“[L]itigants
are included among, and may be the most common example of, the ‘interested person[s]’ who
may invoke § 1782).
Oncology Foundation has also persuaded this Court that the subpoena is warranted under
the additional discretionary factors identified by the United States Supreme Court in Intel Corp.
v. Advanced Micro Devices, 542 U.S. 241, 247 (2004). These factors guide the Court in
assessing § 1782’s “twin aims” of providing efficient means of assistance to participants in
international litigation while encouraging foreign tribunals to provide similar assistance to our
courts. Schmitz v. Bernstein Liebnard v. Lifshitz, LLP, 376 F.3d 79, 84 (2d Cir. 2004). The
factors are: (1) whether “the person from whom discovery is sought is a participant in a foreign
proceedings;” (2) the receptivity of the foreign tribunal to U.S. Court assistance; (3) whether the
Section 1782 request is an attempt to “circumvent foreign proof gathering restrictions;” and (4)
whether the documents sought are “unduly intrusive or burdensome.” Intel, 542 U.S. at 264–65.
Based on Oncology Foundation’s submission, the discretionary factors on the whole
favor issuing the requested subpoena. First, Avenza Development and Dr. Godin are not parties
to this action and thus not subject to the jurisdiction of the European Patent Office. This fact
renders essential this Court’s assistance in obtaining the documents. Second, nothing in the

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record before the Court suggests that the European Patent Office would be unreceptive to the
issuance of the subpoena, and so this factor is neutral in the analysis. Third, the Court is not
aware of any restrictions placed on discovery before the European Patent Office which this
subpoena would circumvent. Fourth, the subpoena appears to be narrowly tailored to the issues
before the foreign tribunal and, based on Oncology Foundation’s representations, within the
possession, custody and control of Avanza Development and Dr. Godin.
Finally, the Court notes that once the subpoena is served on Avanza Development and
Dr. Godin, each may file a motion to quash the subpoena in lieu of compliance, which will
automatically reopen this matter. In Re Naranjo, 768 F.3d 332, 338 n.4 (4th Cir. 2014).
Accordingly, and upon consideration of Oncology Foundation’s Ex Parte Petition, it is
this 30th day of May, 2017, ORDERED that the Petition is GRANTED and that Oncology
Foundation is authorized, pursuant to 28 U.S.C. § 1782, to serve on Avanza Development
Services, LLC, and Steven Godin, Ph.D. a subpoena in the form of Exhibit A to the Petition.

5/30/2017
Date

/S/
Paula Xinis
United States District Judge

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