Brigham Young University et al v. Pfizer et al
Filing
918
MEMORANDUM DECISION and ORDER denying 724 Defendants' Motion for Partial Summary Judgment. Signed by Judge Ted Stewart on 03/27/2012. (tls)
IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
BRIGHAM YOUNG UNIVERSITY, and
DR. DANIEL L. SIMMONS,
Plaintiffs,
MEMORANDUM DECISION AND
ORDER ON DEFENDANTS’
MOTION FOR PARTIAL
SUMMARY JUDGMENT NO. 2
vs.
PFIZER, INC., et al.,
Case No. 2:06-CV-890 TS
Defendants.
This matter is before the Court on Pfizer’s Motion for Partial Summary Judgment on
Exclusions from “Project”.1
I. BACKGROUND
The facts of this case are fully set out in the Court’s Order dated March 13, 2012,2 and
need not be recited here.
1
Docket No. 724.
2
Docket No. 896.
1
II. STANDARD OF REVIEW
Summary judgment is proper if the moving party can demonstrate that there is no genuine
issue of material fact and it is entitled to judgment as a matter of law.3 The party seeking
summary judgment bears the initial burden of demonstrating an absence of a genuine issue of
material fact.4 “Once the moving party has properly supported its motion for summary judgment,
the burden shifts to the nonmoving party to go beyond the pleadings and set forth specific facts
showing that there is a genuine issue for trial.”5 “An issue is genuine ‘if the evidence is such that
a reasonable jury could return a verdict for the nonmoving party.’”
III. DISCUSSION
Paragraph 3.3 of the Research Agreement requires that Pfizer review “research results
obtained from the Project” for patentability.6 In paragraph 107 of its Complaint, BYU compiles a
list of allegedly patentable items that Pfizer should have, pursuant to 3.3, brought to BYU’s
attention. Included in that list are the following:
(a) The COX-2 gene as described by its nucleic acid sequence; (b) the COX-2
enzyme as described by its amino acid sequence; (c) Antibodies that bind to the
COX-2 enzyme, but do not bind to the COX-1 enzyme; [and] (f) A method of
treating pain, inflammation, and fever by selectively inhibiting COX-2 activity in
a human host.7
3
See Fed.R.Civ.P. 56(a).
4
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
5
Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 971 (10th Cir. 2002).
6
Docket No. 757 Ex. 2, at 3.
7
Docket No. 445, at 25.
2
Pfizer objects to the inclusion of (a)-(c) in this list because, it contends, (a)-(c) were discovered
before the Project commenced and thus were not “obtained from” the Project. Pfizer further
objects to the inclusion of (f) on the grounds that, according to Pfizer, Simmons never actually
used DuP-697 in his work and thus a method of treatment involving Dup-697 cannot be
“research results obtained from the Project.” Each argument will be considered in turn.
A.
SECTIONS (a)-(c)
In its October 2011 Order (the “October Order”), the Court considered Pfizer’s argument
that the information contained in paragraph 107 of the Complaint predated the Project and thus
was not subject to paragraph 3.3. The Court denied summary judgment because it found there
were disputed issues of fact as to “what BYU developed in its facilities during the scope of the
Project and which discoveries BYU provided Pfizer during the course of the Project.”8
In its discussion of paragraph 107, the Court noted that BYU had admitted that sections
(a)-(c) predated the Research Agreement’s effective date.9 Pfizer now suggests that (a)-(c) must
be excluded from the Project package because the Court held in the October Order that materials
that predated the Project are not covered by paragraph 3.3.
8
Docket No. 704, at 21. Pfizer argues that the holding of the October Order does not
preclude Pfizer’s current argument because the Court therein denied summary judgment on
Pfizer’s claim that all of the paragraph 107 information was outside the Project, whereas here
Pfizer is only arguing that the materials BYU itself has admitted predate the Project should be
excluded. However, as explained below, the Court is not persuaded that it can grant summary
judgment on any part of paragraph 107.
9
Id. at 25.
3
This argument overstates the holding of the October Order. The Court therein focused on
the meaning of the word “obtained.” Pfizer had suggested that the word included a causal or
temporal element—to be “obtained” from the Project, a research result had to be developed
within and stem from the Project. BYU contended that obtained should be read to mean
something akin to “got possession from,” so that as long as research came to Pfizer because of
the Project (regardless of whether the particular information was developed in the Project), the
research was “obtained” from the Project. The Court agreed with Pfizer, noting that it would
make “little sense for Pfizer to agree to notify BYU of all patentable confidential information
used in the Project, even if that confidential information was simply an input, rather than an
output, of the Project.”10
However, the Court then recognized that there was a dispute of fact as to “what BYU
developed in its facilities during the scope of the Project and which discoveries BYU provided
Pfizer during the course of the Project.”11 Had the Court then been persuaded that there was no
dispute of fact as to whether sections (a)-(c) were obtained from the Project, the Court would
have granted summary judgment in part. The Court declined to do so then, and here reiterates
that conclusion. Whether the elements in paragraph 107 were covered, wholly or in part, by
paragraph 3.3 is a question for the jury. As a part of that determination, the jury must decide
whether sections (a)-(c), once they were “added” to the Project, remained “inputs” or became
part of the Project package. The Court will therefore deny summary judgment on this point.
10
Id. at 25.
11
Id. at 21.
4
B.
SECTION (f)
The Court has previously found that there are disputed issues of fact as to what Simmons
knew about DuP-697 and what Pfizer was aware of with respect to Simmons’s knowledge of
DuP-697. Accordingly, summary judgment cannot be granted on whether a method of treatment
involving DuP-697 was a research result obtained from the Project. The Court will therefore
deny Pfizer’s Motion on this point as well.
IV. CONCLUSION
In light of the foregoing, it is therefore
ORDERED that Pfizer’s Motion for Partial Summary Judgment on Exclusions from
“Project” (Docket No. 724) is DENIED.
DATED March 27, 2012.
BY THE COURT:
_____________________________________
TED STEWART
United States District Judge
5
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