RNAi Litigation

Archive for May, 2010

MIT will file a memorandum ex parte to contest Judge Dein’s ruling regarding attorney Jarrell.

[Case 1:09-cv-11116-PBS Document 384 Filed 05/27/10] – from the Plaintiffs’ Memorandum requesting that the Court lift the stay on documents withheld. The text below should be viewed as a quote from the memorandum with the parenthetical citations of law and footnotes removed.

In their original opposition to the motion to compel, Defendants argued that the common interest matter was “shar[ing] legal advice concerning how best to respond to Max Planck’s and Alnylam’s complaints” about the prosecution of the Tuschl I applications. In her May 11 Order, Magistrate Judge Dein agreed that Defendants shared this common interest—an interest not shared by Max Planck or Alnylam—but found that MIT did not have separate legal representation on this common interest matter, a prerequisite for application of the common interest doctrine to any communications with MIT. Not surprisingly, in their motion for reconsideration directed to Magistrate Judge Dein Defendants tried to broaden the alleged common interest that they shared. They argued that the common interest matter should be broadly defined as anything having to do with the Tuschl I or Tuschl II applications.

In her May 20 Order, Magistrate Judge Dein rejected Defendants’ effort to redefine the common interest matter and, even after considering additional evidence that Defendants submitted along with their motion for reconsideration (which was available to Defendants at the time they filed their opposition to the motion to compel and therefore not a proper basis to seek reconsideration), reaffirmed that the common interest matter was limited to “…determining how to respond to Max Planck and Alnylam” with respect to the Tuschl I applications. Moreover, as Magistrate Judge Dein observed: “What is surprising is that the defendants continue to maintain that Attorney Jarrell was representing MIT on the matter of common interest when her name does not appear on any of the other communications over which the defendants are asserting the privilege.” Read the rest of this entry »

The next court session will be at 9 AM on Wednesday, June 2nd. At this session arguments will be heard on 20 motions, ten from each side. Scheduling will also be decided for the jury trial. Judge Saris now projects that the length of the trial could be “anywhere between a two-week and a month-long trial…”

transcript provided by Helana E. Kline, RMR, CRR; Moakley Federal Courthouse

…trying even what they (the plaintiffs) describe as the limited case would involve resolution of essentially 95% of the factual allegations that are set forth in the original complaint…” (from the defendants)

Also, Judge Saris limited the number of motions on either side to the “top-ten hit list” not the 40 proposed by the defendants.

This meeting included attorneys Morgan Chu and Mike Straub (Irell & Manella) for the plaintiffs, and attorneys Glenn Pfadenhauer and Christopher Morrison (Williams & Connelly) for defendant Whitehead and attorney Donald Ware (Foley Hoag) for defendant UMass.

“Morgan Chu: …The second thing, the proposal (by the plaintiffs and defendants assuming they agree), and perhaps allow me to collapse the discussions we had yesterday afternoon as well as earlier today with defense counsel, the proposal from the plaintiffs was to have a narrow trial beginning June 1 or June 2 or 3, and that it be limited to certain claims, and I’ll very specific, but, first, as an overview, that it be focused on fundamentally the breach of contract claim, including the implied covenant of good faith and fair dealing, and the fiduciary duty claim.

Now, the first amended complaint breaks things out into 21 different counts, and what this would mean is that we would want to go to trial with the jury on five of those counts; and those, in particular, are:

Count 1, which is the breach of contract of the express contract;
(Count 2), which is breach of the implied covenant of good faith and fair
dealing;
Count 3, which is breach of fiduciary duty;
Count 8, which is the claim for declaratory relief which basically is mirroring the breach of contract and breach of fiduciary duty claims;
and then Count 9, which is a negligence count.

And, similarly, we think that the factual proof is identical or nearly identical to the other claims. The other 16 counts which would involve a lot of the pharmaceutical licensing and many other issues would not be subject to this trial.

We also propose that we come up with a short list of motions that each side thought was important for the commencement of the trial. Our specific proposal was that each side would pick three motions that are either motions in limine or Daubert (RE: “admissibility of expert witnesses’ testimony”) motions and request the Court to consider and decide those in advance of trial.

All of this would be without prejudice to evidentiary objections, so, for example, if there’s a motion in limine to withdraw a particular piece of evidence that the party would like to exclude it, then, certainly, raise that during the course of trial.

THE COURT: So, excuse me, I didn’t hear one thing. So it’s three motions in limine, is that it?

MR. CHU: Yes.

THE COURT: Including Daubert?

MR. CHU: Including Daubert because we titled the motions somewhat differently, that’s correct.

MR. PFADENHAUER: Your Honor, this is the plaintiffs’ proposal that Mr. Chu is putting on; it’s not an agreed proposal. We don’t have an agreement on the plane so just so that’s clear for the record.

MR. CHU: That’s correct. That is our proposal. We did ask defendants whether they had an alternative proposal to the particular proposal for production, and perhaps I’ll let the defendants speak to their oral proposal, but, basically, they rejected ours. Read the rest of this entry »

transcript provided by Helana E. Kline, RMR, CRR; Moakley Federal Courthouse

This meeting included attorneys Morgan Chu and Mike Straub (Irell & Manella) for the plaintiffs, and attorneys Glenn Pfadenhauer and Christopher Morrison (Williams & Connelly) for defendant Whitehead and attorney Donald Ware (Foley Hoag) for defendant UMass. The meeting began with clerk Alba announcing the case and then Judge Saris asking “… so what’s up?”

Morgan Chu began by summarizing the outcome of the telephonic meeting earlier that day with Judge Dein (see Judge Dein’s ruling below). Chu stated that Judge Dein confirmed her ruling that the documents held by Whitehead “ought to be produced” and that she will get a written order out probably this week. Because the defendants stated that they will object and appeal her decision, her order will be stayed pending further order by the Court.

Attorney Chu further stated that the plaintiffs would want these documents in advance of the trial (June 1) “if at all possible”.

Further discussion of the documents later in the hearing:

“Morgan Chu: What the defendants did shortly in advance of the telephonic hearing today (with Judge Dein) was to submit as an exhibit for her consideration a document that purported to support their position that the common interests privilege exists.

We, of course — I shouldn’t say “of course,” we didn’t — we were not served with a copy of it; they submitted it in camera. She said the motion from the defendants wasn’t really a proper subject for reconsideration because there hasn’t been newly discovered evidence; it was the evidence that they had at the time, but, nevertheless, she was allowing them to expand the record before her for the making of her decision by accepting this exhibit; and then having reviewed the exhibit, she was confirming her prior decision. Read the rest of this entry »

Case 1:09-cv-11116-PBS Document 374 Filed 05/20/10

Judge Judith G. Dean said as follows:

“I. INTRODUCTION
In this action, plaintiffs Max-Planck-Gesellschaft Zur Förderung der Wissenschaften e.V. (”Max Planck Society”), Max-Planck-Innovation GmbH (”Max Planck Innovation”)[ 1 ] and Alnylam Pharmaceuticals, Inc. (”Alnylam”) claim that the defendants, Whitehead Institute for Biomedical Research (”Whitehead”), Massachusetts Institute of Technology (”MIT”)[ 2 ] and the Board of Trustees of the University of Massachusetts (”UMass”), breached the parties’ written agreements and misappropriated intellectual property owned by the Max Planck Society. During discovery, the defendants withheld from production over a thousand documents and limited deposition testimony involving certain communications on the grounds that the communications were protected by the “common interest” doctrine. Specifically, the defendants contended that they shared a common interest, which excluded Max Planck, “in determining how to respond to Max Planck and Alnylam’s demands that certain information and data and the cross-claim of priority with the Tushl II patent family be removed from the Tuschl I applications.” (Docket No. 166 at 13).

On May 11, 2010, this court issued a Memorandum of Decision and Order on Plaintiffs’ Motion to Compel (”Order”) in which it allowed in part and denied in part the plaintiffs’ motion for an order compelling the defendants to disclose the allegedly privileged material. Significantly, this court found the common interest doctrine inapplicable to a portion of that material because the defendants had failed to establish that MIT was represented by separate counsel in connection with (as the defendants defined the scope of the claimed privilege) “confidential communications to obtain and share legal advice regarding how best to respond to Max Planck and Alnylam’s complaints while ensuring that the broadest legally appropriate patent(s) would issue based on the Tuschl I patent applications . . . .” (Docket No. 166 at 2). Therefore, this court directed the defendants to “produce any documents that have been withheld on the basis of the common interest doctrine that were shared with non-lawyer employees or representatives of MIT, but not MIT’s counsel”, and allowed the plaintiffs’ motion to compel deposition testimony “with respect to questions about the communications reflected in these documents.” (Order at 26). The motion to compel was otherwise denied. Read the rest of this entry »

Case 1:09-cv-11116-PBS Document 172-10

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Case 1:09-cv-11116-PBS Document 172-10

Click these pages to make them more readable

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I have added two informative court documents in the left sidebar. These are Wolfgang Weiss’ two opinions provided to Max-Planck in July and November 2004 as follows:

1. On the differences in inventive matter between Tuschl I and Tuschl II, and potential prior art for Tuschl II relating to 3′ overhangs.

2. On the practice of reciprocal claiming of priorities for, in this case, Tuschl I and Tuschl II.

I have also added links (left sidebar) to the law firm websites for the following additional attorneys who are prominent in this case:

Wolfgang Weiss - IP attorney for Max-Planck
Michael Strub - trial attorney for Max-Planck
Morgan Chu - trial attorney for Max-Planck
Thomas Maffei - trial attorney for Alnylam
Glenn Pfadenhauer - trial attorney for Whitehead

I’ve ordered a transcript of Tuesday’s 4PM telephonic conference (May 17) between Judge Saris and the Plaintiffs and Defendants. When this is received, we will provide a summary of this conference. John

ELECTRONIC Clerk’s Notes for proceedings held before Judge Patti B. Saris: Telephonic Conference held on 5/18/2010. Motions Hearing set for 6/2/2010 at 9:00 AM in Courtroom 19 before Judge Patti B. Saris.

There seemed to be considerable tension in the hearing yesterday which was not as entertaining as the April 12th hearing. Perhaps this tension has grown out of the very evident frustration of Judge Saris, and the attorneys’ frustration over the evidence, or its lack of availability. I’m glad that Gal Friday was there to point out a number of things that I hadn’t absorbed (see her overview below). The difficulty for any of us here is that we have no experience with such court proceedings; furthermore, the discussion between the judge and the attorneys is very fast paced and not always easy to follow.

There were different attorneys (from the same law firms) present on both sides in this second hearing. The plaintiffs where led by Max-Planck attorney Morgan Chu (Irell & Manella) with Max-Planck/Alnylam attorney Michael Strub (Irell & Manella) and Alnylam attorney Thomas Maffei (Griesinger, Tighe, & Maffei) at his side. The defendants were led by UMass attorney Donald Ware (Foley, Hoag) who also took the lead in the April 12th hearing, and Whitehead attorney Glenn Pfadenhauer (Williams & Connolly). It is interesting that UMass attorney Ware has been the most active attorney in these two proceedings, given that UMass may not be a part of the June 1st trial if it is limited to the Breach allegations. 

I’ve always been concerned about the complexity of this case which includes contract disputes, assignment rights, and patent issues. Judge Saris spoke to these very same concerns at the hearing yesterday stating that the patent issues cannot be settled by a jury. It is the alleged breaches of contract and fiduciary duty that require a jury trial and this could be completed in the first half of June.

But at the last minute the defendants threw a monkey wrench into the timing because of their unwillingness to turn over documents that they claim are privileged. Judge Dein had already taken two months to determine that they should be released to the plaintiffs. Judge Saris reminded the defendants of the time already spent on this issue. She told them her schedule was already booked up to June 1st. So if she had to revisit and pass judgment on each of these documents, there would be no trial in June.

Both the plaintiffs and defendants have indicated that they want the trial to move forward asap because the movement of Tuschl I and Tuschl II patents has been stalled at the USPTO as the result of this litigation. I doubt that the plaintiffs will back down on their need for the documents in question, and Judge Saris’ attitude about this issue was clear when she said to the defendants “Does this matter?” So the defendants are between a rock and a hard place.  Is there a smoking gun in those documents? It seems reasonable to believe that these documents have relevance to the Breach allegations; so the Max-Planck wants to have them before they go to trial against Whitehead. 

Once the Breach allegations are settled then the issues related to UMass such as its assignment of Tuschl I rights and UMass’s subsequent out-licensing to Sirna and CytRx could be addressed by Declaratory Judgment (judge’s ruling as a matter of law). Can anyone imagine what Merck will do if Judge Saris rules against ownership of Tuschl I rights by UMass?

“It was my impression that the Max-Planck attorneys from Irell & Manella left the courtroom looking like the cat that swallowed the canary.” Gal Friday

By Gal Friday, guest writer

At the May 17^th hearing Judge Saris stated that she has reserved two weeks beginning June 1^st for a jury trial on the core issues… maybe.

The theater alone was considerable.  At 2:30 PM a phalanx of very well groomed, suited and shoed lawyers filed down the aisles of the courtroom gallery - much in the manner of a wedding procession with the defendants on the left facing the judge and the plaintiffs on the right. There were definitely more lawyers/staff present on behalf of the defendants.

I was quite taken by Judge Saris. She displayed a no nonsense approach that I found refreshing. She started off bringing the question of timing into play. She noted that she had received a hundred-page document containing a large number of requests for judicial judgments from the attorneys. The defendants had filed 40 motions in limine and the plaintiffs, 12. She had spent time on the weekend attempting to read through them but only just got started. As often stated in the April 12^th hearing and this hearing, she is demanding that the attorneys pare this case down to the core issues of this lawsuit.

If any of you have been keeping track of this case, you’re probably in touch with far more detail than I am, but I’ll tell you this – it doesn’t take a law degree to figure out that the more complications somebody throws into an argument, the harder it is to reduce the conflict to the core issues; once the core issues are resolved by trial many of the other issues will either stand or fall. What the judge wanted from both sides was agreement on the core issues that could be tried by a jury and an abandonment of the extraneous matter.

I wish I had more of a legal background because I might have understood some more of the nuances. But even a blind woman wouldn’t have missed the tenor of what was going on. The judge was trying to nudge the opposing councils to get together and weed through all the schmutz they’ve spent the last eleven months putting on the table to allow this matter to be resolved. Mind you, a whole lot of the ‘complicated issues’ or ‘complexities’ would instantaneously become moot or stand as irrelevant once the issues surrounding breach of contract and breach of fiduciary duty were addressed. Furthermore, this trial would be between Max-Planck and Whitehead with Alnylam and UMass pushed to the side.

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