`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`
`Civil Action No.
`1:18-cv-12029-ADB
`
`
`
`
`TEVA PHARMACEUTICALS
`INTERNATIONAL GMBH and
`TEVA PHARMACEUTICALS
`USA, INC.,
`
`
`Plaintiffs,
`
`
`v.
`
`ELI LILLY AND COMPANY,
`
`
`Defendant.
`
`
`
`
`
`
`TEVA’S BENCH BRIEF CONCERNING PATENT ASSIGNMENT LAW AND
`STANDING
`
`Recording an assignment with the Patent Office “creates a presumption of validity as to
`
`the assignment and places the burden to rebut such a showing on one challenging the
`
`assignment.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1328 (Fed. Cir. 2010); see
`
`also Dow Chem. Co. v. Nova Chemicals Corp. (Canada), 458 F. App’x 910, 912 (Fed. Cir. 2012)
`
`(Defendant “failed to overcome the presumption of title created by the record of assignment filed
`
`with the PTO. The district court correctly determined that [plaintiff] has standing to enforce the
`
`patents in suit.”). “The presumption as to executed assignments is that they are proper unless a
`
`challenger comes forward with affirmative evidence to the contrary. ‘Could have been’ is not
`
`affirmative evidence.” Jefferson St. Holdings Intell. Prop. LLC v. Rearth USA, LLC, No. 2:18-
`
`CV-00338-JRG, 2019 WL 6647333, at *2 (E.D. Tex. Jan. 8, 2019).
`
`
`
`1
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`
`
`Case 1:18-cv-12029-ADB Document 582 Filed 11/04/22 Page 2 of 4
`
`By statute, notarization is prima facie evidence of the assignment of a patent. See 35 U.S.C.
`
`§ 261 (“A certificate of acknowledgment under the hand and official seal of a person authorized
`
`to administer oaths within the United States . . . shall be prima facie evidence of the execution of
`
`an assignment, grant or conveyance of a patent or application for patent.”); see also See Le Fiell
`
`v. U.S., 162 Ct. Cl. 865, 867, 868 n.4 (1963); iBio, Inc. v. Fraunhofer USA, Inc., No. CV 10256-
`
`VCMR, 2016 WL 4059257 (Del. Ch. July 29, 2016); US SolarTech, Inc. v. j-fiber, GmbH, No.
`
`CIV.A. 06-10293-RWZ, 2013 WL 1755212, at *3 (D. Mass. Apr. 24, 2013) (On summary
`
`judgment standard, resolving ownership issue because there was a “notarized assignment” as to
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`which defendant had not presented evidence of “fraud or forgery.”).
`
`“[A]n exclusive license may be tantamount to an assignment for purposes of creating
`
`standing if it conveys to the licensee all substantial rights to the patent at issue.” Keranos, LLC v.
`
`Silicon Storage Tech., Inc., 797 F.3d 1025, 1031 (Fed. Cir. 2015) (citation omitted). Even where
`
`an exclusive licensee lacked sufficient rights to assert a patent “in its own name . . . the exclusive
`
`licensee may have standing to participate in a patent infringement suit, but it must join the owner
`
`of legal title to satisfy the standing requirement.” Id.
`
`
`
`
`
`2
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`
`
`Case 1:18-cv-12029-ADB Document 582 Filed 11/04/22 Page 3 of 4
`
`
`Respectfully Submitted,
`
`/s/ Elaine Herrmann Blais
`Douglas J. Kline (BBO# 556680)
`Elaine Herrmann Blais (BBO# 656142)
`Robert Frederickson III (BBO# 670111)
`Molly Grammel (BBO# 688439)
`Kevin P. Martin (BBO# 655222)
`Joshua S. Weinger (BBO# 690814)
`Alexandra Lu (BBO# 691114)
`Eric T. Romeo (BBO# 691591)
`Kathleen A. McGuinness (BBO# 693760)
`Tara R. Thigpen (BBO# 707508)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
`kmartin@goodwinlaw.com
`eblais@goodwinlaw.com
`rfrederickson@goodwinlaw.com
`mgrammel@goodwinlaw.com
`jweinger@goodwinlaw.com
`alu@goodwinlaw.com
`eromeo@goodwinlaw.com
`kmcguinness@goodwinlaw.com
`tthigpen@goodwinlaw.com
`
`
`Attorneys for Plaintiffs
`
`
`
`
`Dated: November 4, 2022
`
`
`
`
`
`Natasha E. Daughtrey (pro hac vice)
`Sean M. Anderson (pro hac vice)
`GOODWIN PROCTER LLP
`601 S. Figueroa St.
`Los Angeles, CA 90017
`Tel.: (213) 426-2500
`Fax: (213) 623-1673
`ndaughtrey@goodwinlaw.com
`sanderson@goodwinlaw.com
`
`Madeline R. DiLascia (pro hac vice)
`GOODWIN PROCTER LLP
`1900 N Street N.W.
`Washington, D.C. 20036
`Tel.: (202) 346-4000
`Fax: (202) 204-7250
`mdilascia@goodwinlaw.com
`
`Audie Soucy (pro hac vice)
`Grace P. Truong (pro hac vice)
`Gabriel B. Ferrante (pro hac vice)
`GOODWIN PROCTER LLP
`The New York Times Building
`620 8th Ave
`New York, NY 10018
`Tel.: (212) 813-8800
`Fax: (212) 355-3333
`asoucy@goodwinlaw.com
`gtruong@goodwinlaw.com
`gferrante@goodwinlaw.com
`
`
`
`
`
`
`
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`
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`
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`
`
`Case 1:18-cv-12029-ADB Document 582 Filed 11/04/22 Page 4 of 4
`
`CERTIFICATE OF SERVICE
`
`I, Elaine Herrmann Blais, hereby certify that this document filed through the ECF system
`
`will be sent electronically to the registered participants as identified on the Notice of Electronic
`
`Filing (“NEF”) and paper copies will be sent to those indicated as non-registered participants on
`
`November 4, 2022.
`
`
`
`
`
`
`
`
`/s/ Elaine Herrmann Blais
`Elaine Herrmann Blais (BBO# 656142)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`eblais@goodwinlaw.com
`
`
`
`
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