IP Forecast: Daiichi Sankyo Unit Takes Drug Rival To A Jury

By Andrew Karpan
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Law360 (July 8, 2021, 8:59 PM EDT) -- Attorneys who are vaccinated will be allowed to go maskless before a jury on Monday in a Daiichi Sankyo unit's patent suit in California federal court alleging Novartis is infringing its billion-dollar skin cancer treatment. Here's a look at that case — plus all the other major intellectual property matters on deck in the coming week.

Next week's trial will see Novartis Pharmaceuticals Corp. fighting to invalidate two Plexxikon Inc.-owned patents related to a skin cancer drug called Zelboraf. The cancer treatment had been at the center of Daiichi Sankyo's decision to buy Plexxikon for $805 million back in 2011 andaccording to the complaint, it has generated more than $1.5 billion in worldwide sales for Daiichi Sankyo since.

Novartis sells a competing drug, Tafinlar, which it bought as part of a $16 billion deal with GlaxoSmithKline and began selling in 2017, the same year Plexxikon filed suit. According to a trial brief, Novartis agrees that the drug infringes claims in the two Plexxikon patents, but plans to argue the patents are invalid, in part, because GSK had developed the drug first.

The Patent Trial and Appeal Board has already turned down a request from Novartis to examine the patents. Plexxikon plans to argue that it was actually the first to develop the genus, or group of related compounds, that is claimed in its patents.

"The inventors of the patents-in-suit will testify that they formed a definite and permanent idea of the claimed genuses in March 2005, long before the first of the GSK compounds was synthesized," Plexxikon said in a brief.

The Oakland trial is among the first in-person intellectual property cases to be tried before a jury in the Northern District of California this year. U.S. District Judge Haywood S. Gilliam will allow attorneys who show proof of vaccination to go maskless during openings, closings, witness examinations and any sidebars. Remote access to the proceedings — a hallmark of pandemic-era trials — will not be provided in the case, as the courtroom will be "open to the public."

"I just finished up a trial in Marshall, [Texas] with basically the same protocol," Durie Tangri LLP principal Daralyn Durie, who is representing Plexxikon, told Law360 last month, "I thought it was pretty smooth."

Representatives for Novartis did not respond to a request for comment.

The patents at issue are U.S. Patent Numbers 9,469,640 and 9,844,539.

Plexxikon is represented by Daralyn Durie, David McGowan, Eugene Novikov, Raghav Krishnapriyan, Kira A. Davis, Andrew T. Jones and Katherine E. McNutt of Durie Tangri LLP and ‪Jeffrey D. Wilson, Andrew R. Basile Jr., Eddie D. Woodworth and Ryan T. McCleary of Young Basile Hanlon & MacFarlane PC.

Novartis is represented by Thomas P. Steindler, Paul M. Schoenhard, Michael S. Nadel, Ian B. Brooks, Jennifer B. Routh, Sarah Chapin Columbia and David Mlaver of McDermott Will & Emery.

The case is Plexxikon Inc. v. Novartis Pharmaceuticals Corp., case number 4:17-cv-04405, in the U.S. District Court for the Northern District of California.

Also in the courts:

On Monday, a weeklong patent trial is scheduled to begin in Delaware federal court between Next Caller Inc. and TrustID Inc., two rival caller-authentication companies. TrustID says that Next Caller markets authentication services that infringe three TrustID patents, while Next Caller plans on arguing both that its services don't infringe and that the patents are invalid, an argument that it also brought to the Patent Trial and Appeal Board in 2019. The board had declined to hear the case, citing its originally scheduled trial date, last July, though that was repeatedly rescheduled because of court closures caused by the pandemic.

A federal judge in California will hear efforts on Tuesday by eHealth to secure a preliminary injunction in a trade secrets case against Healthpilot Technologies LLC, a company started by a former high-ranking eHealth executive. In its injunctive bid, filed the same day it filed suit in May, eHealth says its "former chief operating officer engaged in a concerted effort to steal some of eHealth's most sensitive confidential and proprietary information." Healthpilot has called eHealth's claims frivolous, labeling it "a case driven by plaintiff's frustration that multiple valued employees chose to leave their employment to compete."

On Wednesday, a different judge in California's Northern District will hear a collection of contentious pretrial motions, filed a week before a jury trial is set to start over allegations that Vade Secure, a French technology company, hired a former vice president at a Proofpoint Inc. unit who misappropriated his former employer's trade secrets. Proofpoint wants a ruling preventing Vade Secure from mentioning that the investment firm Thoma Bravo bought Proofpoint for roughly $12.3 billion this April, out of concern that it would imply "Proofpoint is successful and wealthy and thus need not be compensated for any harm." Vade wants a ruling preventing Proofpoint from drawing attention to the French company's witnesses who were barred by COVID-19 travel restrictions from testifying, as lawyers for Proofpoint have "made clear" that it planned on implying that the witnesses were "held back from trial to avoid damaging testimony."

At the Board

On Monday, the Massachusetts-based maker of the Roomba line of robotic vacuum cleaners will be defending three iRobot Corp. patents from inter partes review petitions lodged by rival SharkNinja. The three patents are among those at issue in a patent suit in Massachusetts federal court, stayed in January pending the results of PTAB proceedings.

The patent board Tuesday will hear three IPR petitions filed by Dolby Laboratories Inc. against digital security technology patents owned by Intertrust Technologies Corp. The patents are at issue in three lawsuits Intertrust filed in Texas against movie theater chains Cinemark Holdings Inc., Regal Entertainment Co. and AMC Entertainment Group Inc. Last month, U.S. District Judge Rodney Gilstrap scheduled a jury trial in that case to begin in early ​​October.

--Additional reporting by Craig Clough, Benjamin Horney and Britain Eakin. Editing by Robert Rudinger and Emily Kokoll.

Correction: A prior version of the story incorrectly identified the companies involved in a patent case. The error has been corrected.

For a reprint of this article, please contact reprints@law360.com.

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Case Information

Case Title

Plexxikon Inc. v. Novartis Pharmaceuticals Corporation


Case Number

4:17-cv-04405

Court

California Northern

Nature of Suit

Patent

Judge

Haywood S Gilliam, Jr

Date Filed

August 03, 2017


Case Title

TRUSTID, Inc. v. Next Caller Inc.


Case Number

1:18-cv-00172

Court

Delaware

Nature of Suit

Patent

Judge

Maryellen Noreika

Date Filed

January 30, 2018


Case Title

Proofpoint, Inc. et al v. Vade Secure, Incorporated et al


Case Number

3:19-cv-04238

Court

California Northern

Nature of Suit

Other Statutory Actions

Judge

Maxine M. Chesney

Date Filed

July 23, 2019


Case Title

Ehealthinsurance Services, Inc. v. Healthpilot Technologies LLC et al


Case Number

4:21-cv-04061

Court

California Northern

Nature of Suit

Defend Trade Secrets Act (of 2016)

Judge

Yvonne Gonzalez Rogers

Date Filed

May 27, 2021

PTAB Case Information

Case Title

SharkNinja Operating LLC v. iRobot Corporation


Case Number

IPR2020-00733

Date Filed

March 23, 2020


Case Title

SharkNinja Operating LLC v. iRobot Corporation


Case Number

IPR2020-00734

Date Filed

March 23, 2020


Case Title

SharkNinja Operating LLC v. iRobot Corporation


Case Number

IPR2020-00735

Date Filed

March 23, 2020


Case Title

Dolby Laboratories, Inc. v. Intertrust Technologies Corporation


Case Number

IPR2020-00662

Date Filed

March 26, 2020


Case Title

Dolby Laboratories, Inc. v. Intertrust Technologies Corporation


Case Number

IPR2020-00661

Date Filed

March 26, 2020

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