Case 3:23-cv-04200-ZNQ-TJB Document 35 Filed 05/20/24 Page 1 of 15 PagelD: 930
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`NOT FOR PUBLICATION
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`ACUITAS THERAPEUTICSINC.,
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`Plaintiff
`¥.
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`Civil Action No. 23-4200 (ZNQ)(TIB)
`OPINION
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`GENEVANT SCIENCES GMBH,ef al,
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`Defendants.
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`QURAISHI, District Judge
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`THIS MATTER comes before the Court upon a Motion to Dismiss filed by Defendants
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`Genevant Sciences GmbH and Arbutus Biopharma Corp.
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`(“Defendants”)
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`(ECF No. 13.)
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`Defendants filed a Brief in Support of the Motion.
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`(“Moving Br.”, ECF No, 13-1.) Plaintiff
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`Acuitas Therapeutics Inc, (“Plaintiff”) filed a Memorandumin Opposition (“Opp.”, ECF No. 20)
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`and Defendants filed a Reply Brief (ECF No. 27).
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`The Court has carefully considered the parties’ submissions and decides the Motion
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`without oral argument pursuant to Federal Rule of Civil Procedure 78 and Local Civil Rule 78.1.
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`Forthe reasons set forth below, the Court will GRANT the Motion to Dismiss and DISMISS the
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`Complaint WITHOUT PREJUDICE,
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`L
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`BACKGROUND AND PROCEDURAL HISTORY
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`Plaintiff develops lipid nanoparticle (““LNP”)
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`formulations
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`for delivering mRNA
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`therapeutics.
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`(See Compl. 6.) It supplies and licenses its LNPs to non-parties Pfizer and
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`BioNTech for use in COMIRNATY®, a COVID-19 vaccine marketed by Pfizer and BioNTech.
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`Case 3:23-cv-04200-ZNQ-TJB Document 35 Filed 05/20/24 Page 2 of 15 PagelD: 931
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`(Compl. 9] 3, 44.) Plaintiff seeks a declaratory judgment that the Comirnaty vaccine does not
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`infringe Arbutus’s patents. Ud. {| 3, 32.)
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`The parties’ dispute began in November 2020 when Defendants sent Pfizer and BioNTech
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`a first letter notifying themthat the Comirnaty vaccine mightinfringe eight of Defendants’ patents.
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`(See id. 35.) Defendants sent two more notice letters in October 2021 and June 2022 that
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`identified additional patents.
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`(id. 9§36~37.) In March of 2022, after the secondletter, Plaintiff
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`filed suit against Defendants in New York seeking a declaration of noninfringementand invalidity
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`of the patents identified in the letters (the “New York DJA Suit”).
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`(Ud. 738.)
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`In April 2023,
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`Defendants begantheir own suit against Pfizer and BioNTechinthis court alleging infringement
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`of five of their patents. Ud. ]40.) That matter is before the undersigned as Arbutus Biopharma
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`Corp., et al. v, Pfizer Inc., et al., 23-cv-1876 (the “New Jersey Infringement Suit”). In response,
`Plaintif? withdrew the New York DJA Suit in August 2023 andfiled the present suit.
`(/d. 4 40—
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`41.) In this suit, Plaintiff again seeks a declaratory judgment that ten of Defendants’ patents are
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`invalid and not infringed. Ud. J 42.)
`IH,
`JURISDICTION
`Based on the claims alleged by the Complaint, the Court has subject matter jurisdiction
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`pursuant fo 28 U.S.C. §§ 1331, 1338(a), and 2201.
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`I.
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`LEGAL STANDARD
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`A.
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`MOTION TO DISMISS FOR LACKOF SUBJECT MATTER
`JURISDICTION
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`Federal Rule of Civil Procedure 12(b)(1) allows a court to dismiss a complaintforlack of
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`subject matter jurisdiction because a party lacks standing. Ballentine v. United States, 486 F.3d
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`Case 3:23-cv-04200-ZNQ-TJB Document 35 Filed 05/20/24 Page 3 of 15 PagelD: 932
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`806, 810 (3d Cir. 2007).! Two types ofchallenges can be made under Rule 12(b)(1): a facial attack
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`or a factual attack.
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`In re Horizon Healthcare Servs. Inc. Data Breach Litig., 846 F.3d 625, 632
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`(3d Cir, 2017), A facial attack “challenges subject matter jurisdiction without disputing the facts
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`alleged in the complaint, and it requires the court to considerthe allegations of the complaint as
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`true.” Davis v, Wells Fargo, 824 F.3d 333, 346 (3d Cir, 2016) (internal quotation marks and
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`citations omitted). A factual challenge “attacks the factual allegations underlying the complaint's
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`assertion of jurisdiction, either through the filing of an answer or ‘otherwise present{ing]
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`competing facts.’ ” Jd. (quoting Const. Party of Penn.
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`vy. Aichele, 757 F.3d 347, 358 (Gd Cir.
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`2014)).
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`“In reviewing facial challenges to standing, [courts] apply the same standard as on review
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`of a motion to dismiss under Rule 12¢b)(6).” Jn re Horizon, 846 F.3d at 633. Courts “only consider
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`the allegations ofthe complaint and documents referenced therein andattached thereto, in the light
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`most favorable to the plaintiff” Const. Party ofPenn., 757 F.3d at 358 (citations omitted). When
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`considering a factual challenge, by contrast, “a court may weigh and consider evidence outside the
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`pleadings.” fe. (quotation marks and citations omitted).
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`B.
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`ARTICLE HI STANDING
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`The Declaratory Judgment Act (“DJA”) providesthat,
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`in the case of actual controversy withinits jurisdiction... any court
`ofthe United States, upon the filing of an appropriate pleading, may
`declare the rights and other legal relations of any interested party
`seeking such declaration, whether or not furtherrelief is or could be
`sought,
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`' Here, the Court applies Third Circuit law to those aspects of a standing analysis that do not inyplicate patent law.
`See Salix Pharm., Ltd. v. Norwich Pharm. Ine., 98 FAth 1056, 1069 (Fed, Cir, 2024); In re Lipitor Antitrust Litig.,
`855 F.3d 126, 148 (3d Cir, 2017).
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`28 U.S.C. § 2201 (a). The Supreme Court has explained that the “actual controversy” requirement
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`of the Act refers to the types of “cases” and “controversies” justiciable under Article III. See
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`Medimmune, Inc. v. Genentech, Inc., 549 U.S, 118 (2007) (citation omitted).
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`In the patent context, the Court of Appeals for the Federal Circuit has articulated the
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`considerations for assessing whethera plaintiff seeking a declaratory judgment has metthe case-
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`or-controversy requirement of Article III.? See Mitek Sys., Inc, v. United Servs, Auto. Ass'n, 34 F.
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`4th 1334 (Fed. Cir, 2022).
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`Under Mitek, to determine whethera plaintiff might reasonably beliable for infringement,
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`a district court should look to the elements of the potential cause of action, then consider both the
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`patent claimsat issue and the alleged facts concerning the plaintiff in light of those elements. Jd.
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`at 1343, Although the plaintiff is not obligated to prove, for jurisdictional purposes, that it
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`infringes the patents-in-suit (which is what it ultimately seeks to disprove in its case), “there must
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`be allegations by the patentee orother record evidence that establish at least a reasonable potential
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`that infringement claims against him could be brought.” Jd. (quoting Microsoft, 755 F.3d at 905).
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`“This requires separate consideration of the separate types of infringement (notably, direct
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`infrmgement, inducement of infringement, and contributory infringement) of the claims of the
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`patents-in-suit, and of the bearing on any infringement of such claims of the fact stressed by the
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`district court...
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`.” Jd.
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`Cc.
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`A DISTRICT COURT'S DISCRETION TO DECLINE TO HEAR A
`DECLARATORY JUDGMENT ACTION
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`Importantly, the DJA provides that courts “may declare the rights and otherlegal relation
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`of any interested party seeking such declaration.” 28 U.S.C. § 2201 (emphasis added). Based on
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`? The Court applies the law of the Court of Appeals for the Federal Circuit to this issue because an assessment of
`liability for patent infringement implicates substantive patent law. See In re Spalding Sports Worldwide, Inc,, 203
`F.3d 800, 803 (Fed. Cir, 2000).
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`this permissive language in the statute, the Supreme Court has held that its “textual conumitment
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`to discretion” vests federal courts with “unique and substantial discretion in deciding whetherto
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`declare the rights of litigants.” Wilton v. Seven Falls Co., 515 U.S, 277, 286 (1995) (citations
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`omitted).
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`In Mitek, the Federal Circuit separately addressed the standard for discretionary dismissals
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`of declaratory judgment actions.’ It counseled that:
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`as long as a district court “acts in accordance with the purposes of
`the Declaratory Judgment Act and the principles of sound judicial
`administration,
`[it] has broad discretion to refuse to entertain a
`declaratory judgmentaction.” EMC Corp. v. Norand Corp., 89 F.3d
`807, 813-14 (Fed. Cir. 1996). But, consistent with the constraints
`imposed by the noted statutory purposes and judicial-administration
`principles, we have insisted: “There must be well-founded reasons
`for declining to entertain a declaratory judgmentaction.” Capo, Inc.
`v. Dioptics Medical Products, 387 F.3d 1352, 1355 (Fed. Cir. 2004);
`see also Micron, 518 F.3d at 903-05; Genentech, Inc. v. Eli Lilly &
`Co, 998 F.2d 931, 936 (Fed. Cir. 1993). As an example, we
`explained in Ford Motor Co. v. United States that, “[wlhile the
`existence of another adequate remedy does not necessarily bar a
`declaratory judgment, district courts may refuse declaratory relief
`where an alternative remedy is better or more effective.” 811 F.3d
`1371, 1379-80 (Fed. Cir. 2016) (citations omitted); see also 10B
`Wright & Miller § 2758 & n.6 (4th ed. Apr, 2022 Update).
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`Mitek, 34 F. 4th at 1347.4 In short, the Court construes Mitek to require district courts to provide
`good reason for dismissing a declaratory judgmentaction,
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`3 The Court applies the law of the Court of Appeals forthe Federal Circuitto this issue because that court has asserted
`jurisdiction over it. See Conmne’ns Test Design, Inc .y. Contec, LLC, 952 F.3d 1356, 1362 (Fed. Cir. 2020) (the
`“question whether to accept ordecline jurisdiction in an action for a declaration ofpatentrights in view ofa later-filed
`suit for patent infringement impacts this court's mandate te promote national uniformity in patent practice. Because
`it is an issue that falls within our exclusive subject matter jurisdiction, we do not defer to the procedural rules of other
`circuits.”)
`In this Court’s estimation, the fact that the present DJA suit wasfiled after the parallel infringementsuit
`rather than before would notalter the Federal Circuit's assertion ofjurisdiction,
`4 The Court notes in passing that in the same context the Third Circuit directs district courts to apply a multi-factor
`test when considering whether to exercise jurisdiction over a declaratory judgmentaction, and it appears to be largely
`consistent with the Federal Circuit’s call for “well-founded reasons.” Kelly y, MaxumSpecialty Ins, Grp., 868 F.3d
`274, 282 (3d Cir, 2017) (district courts are to consider whethera parallel proceeding is underway, then weigha list of
`eight, non-exhaustive factors).
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`Case 3:23-cv-04200-ZNQ-TJB Document 35 Filed 05/20/24 Page 6 of 15 PagelD: 935
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`IV.
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`DISCUSSION
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`The Motion seeks dismissal for lack of subject matter jurisdiction on the basis that the
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`Complaint fails to allege an actual controversy between the parties.
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`In the alternative, it requests
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`that the Court exercise its discretion to decline to hearthis action.
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`A.
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`WHETHER THE COMPLAINT ALLEGES A CASE OR CONTROVERSY
`UNDER ARTICLE I
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`The Motionbrings a facial challenge to subject matterjurisdiction based on the Complaint.
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`Defendants raise three arguments® that the Court considers below. °
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`1,
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`Induced Infringement
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`The Complaint includes allegations that Plaintiff is faces a risk liability for induced
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`infringement.
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`(Compl. { 51.) Defendants argue that a claim for induced infringement requires a
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`patentee to allege that a defendant knowingly undertook an affirmative act
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`to encourage
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`infringement. (Moving Br. at 13.°) In Defendants’ view, the Complaint in this matterfails to state
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`an actual controversy because it does not allege that they have asserted Plaintiff “encouraged”
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`Pfizer/BioNTech to perform acts that would infringe one or more limitations of the claims in
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`Defendants’ patents, (/d.)
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`Plaintiff takes a more expansive view of what can support a case or controversy,
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`emphasizing that “fajll that is required on this facial challenge is that there ‘be allegations by the
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`patentee or other record evidence that establish at least a reasonable potential that such a claim
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`in its opposition.
`* Defendants also raise a fourth argument in the Motion that Plaintiff neglects to address it
`Defendants contend that the Complaint fails to support its claim that Plaintiff faces the possibility of liability for
`contributory infringement. (Moving Br. at 10-11.) Defendants are correct. Although the Complaint repeatedly raises
`the specter of contributory infringementliability (Compl 9 6, 51, 54) it does so in a conclusory fashion without
`supporting factual allegations. Moreover, Plaintiff's opposition to the Motion is conspicuously silent on contributory
`infringement, and tellingly states under a heading in its brief devoted to indirect infringementthat “[iJhe issue here is
`induced infringement under 35 U.S.C. | 271(b).” (Opp. at 15.) Accordingly, based on both inadequate pleading in
`the Complaint and waiver on the present motion, the Court concludes that the Complaint fails to state a case or
`controversy as to Plaintiff's potential liability for contributory infringement,
`‘ Forclarity, the Court cites to the parties’ briefs by their internal pagination rather than the one imposed by the
`CM/ECFsystem.
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`could be brought.” (Opp. at 15) (quoting Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 905
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`(Fed Cir. 2014) (emphasis added by Plaintiff), Plaintiff also quotes authority for the proposition
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`that “[w]henthe holder of a patent with system claims accuses a customerof direct infringement based
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`on the customer’s making, using, or selling of an allegedly infringing system in which a supplier’s
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`product functions as a material component, there may be an implicit assertion that the supplier has
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`indirectly infringed the patent.” (Opp. at 15-16) (quoting Arris Grp., Inc. v. British Telecomms., 639
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`F.3d 1368, 1375 (Fed. Cir. 2011).) Plaintiff then argues that “Defendants’ complaint against Pfizer
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`and BioNTechimplies that [Plaintiff's] lipids are a ‘material component’ in Comirnaty.” (Ud. at
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`15-16.) As support, Plaintiff quotes three counts from Defendants’ complaint in the New Jersey
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`Suit that identify two of Plaintiff's LNPs as factual bases for Pfizet/BioNTech’s purported
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`infringement. (/d. at 16.)
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`The Court disagrees with Plaintiffs position. First, its selected language from Microsoft to the
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`effect that there need only be “a reasonable potential that a claim might be brought” divorces that broad
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`statement of principle from the detailed infringement analyses that are both required and applied by
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`the Federal Circuit in Microsoft. In relevant part, the Microsoft court observedthat establishing a case
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`or controversy entails a “look to the elements of potential cause of action” and it confirmed that induced
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`infringement requires a showing of an inducer’s “knowledge and affirmative act of encouragement.”
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`755 F.3d at 904-905 (citation omitted). In two instances, the Federal Circuit found that the inducer’s
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`instruction manuals and online documentation established the scienter element
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`for
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`induced
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`infringement. fd. at 905, Ina third instance, it found that documentation provided by a third party did
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`not establish the scienter element of the defendant. fd. Thus, Microsoft does not stand for so broad a
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`principle as Plaintiff appears to rely upon.
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`Second, Plaintiffs reliance on Arris in support of its induced infringement position is also
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`misplaced. The passage it quotes to the effect that “there may be an implicit assertion that the supplier
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`has indirectly infringed the patent” refers to contributoryinfringement, not induced infringement.
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`In
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`fact, the passage’s ownreference to a “material component,”parallels language fromthe part of the
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`infringement statute addressing contributory infringement. Compare Arris, 639 F.3d at 1375 with 35
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`U.S.C, § 271 (c) (Whoever... sells... a component of a patented. .. composition ... constituting
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`a material part ofthe invention”). It should also have been clearfromthe Arris decision itself because
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`the opinion addresses contributory infringement, not induced infringement.
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`In fact, Arris’s single
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`holding explicitly states as much: “[fjrom our consideration ofall the circumstances .
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`.
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`. there is an
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`Article Ul case or controversy between [the parties] regarding [plaintiff's] potential
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`liability for
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`contributory infringement.”
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`639 F.3d at 1375.
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`In short,
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`the “implicit assertion” of indirect
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`infringement articulated by Arris, is not applicable to induced infringement. See also Microsoft, 755
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`F.3d at 905 ([S]imply selling a product capable of being used in aninfringing manneris not sufficient
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`to create a substantial controversy regarding inducement.”)
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`Forthese reasons, the Court sets aside Plaintiffs briefing on this issue. The Court nevertheless
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`proceeds through an Article ITI analysis to meetits independent obligation to confirmits subject matter
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`jurisdiction. See Henderson v. Shinseki, 562 U.S. 428, 434 (2011). The Court begins, as advised in
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`Mitek, by looking to the elements of a claim for induced infringement.
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`35 ULS.C, § 271(b) states that “[w]hoeveractively induces infringement of a patent shall be
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`liable as an infringer,” A claim for induced infringement must allege a direct infringement and that
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`the alleged inducer “knowingly induced infringement and possessed specific intent to encourage
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`another’s infringement.” See Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.Ath 1339, 1351
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`(Fed. Cir, 2022),
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`As to the next steps, considering “the patent claims at issue” and “the alleged facts
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`concerning the plaintiff,” the Complaint does not provide the necessary information.
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`In relevant
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`part, the Complaint merely alleges that:
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`51. ... Indeed, Arbutus’s New Jersey Action explicitly identifies
`Acuitas’s lipids and LNPs while alleging that COMIRNATY@
`infringes their patents. That creates a risk of Acuitas itself facing
`the possibility of liability under 35 U.S.C. § 271(b) for inducingits
`customers’ infringement or under § 271(c) for contributingto it.
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`52, On November 23, 2020... they sent their first 35 U.S.C. §
`287(a) notice to Pfizer and BioNTech...
`. Arbutus and Genevant
`sent
`two more patent-inftingement notices
`to Pfizer
`and
`BioNTech—with the last notice sent on June 3, 2022—and sued
`Pfizer and BioNTech for patent infringement on April 4, 2023, in
`this District.
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`(ECF No. 1.) Asis clear fromthis text, the Complaint is devoid of allegations with respect to patent
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`claims that are being asserted in the New Jersey Suit that would support Plaintiff's declaratory
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`judgmentclaims in this case. Perhaps moreclearly, it lacks the requisite allegations that Defendants
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`encouragedPfizer and/or BioNTechto infringe Plaintiff's patents, and that Defendants had the specific
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`intent to do so.’ Accordingly, the Court finds that the Complaintfails to state a case or controversy as
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`to Plaintiffs alleged induced infringement.
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`2,
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`Indemnity Liability
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`The Motion also challenges the adequacy of the Complaint’s allegations of a case or
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`controversy based on Plaintiffs alleged liability for indemnification under any agreements with
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`Pfizer and/or BioNTech. Defendants contend that the bare allegation in the Complaint that
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`Plaintiff's agreement with BioNTech contains an indemnification agreementis insufficient as a
`matter oflaw. (MovingBr. at 16-17.) They raise that same argument withrespectto the adequacy
`of Plaintiff's allegation that BioNTech has requested indemnification. Ud.)
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`In response, Plaintiffinsists that the Complaint’s allegations are sufficient becauseit pleads
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`that there is a license agreement with BioNTechthat includes indemnification provisions and that
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`’ For example, there are no allegations that Defendants provided any sort of instruction or user documentation to
`Pfizer/BioNTechof the sort found dispositive by the Federal Circuit in Microsaff, as noted above.
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`BioNTechhas sought indemnification in three letters which nameall of the patents in the present
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`suit. (Opp. at 12-15.) In supportof its position, Plaintiff cites Signify N. Am. Corp. v. Menard, Inc.,
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`Civ. No. 22-706, 2023 WL 5647789 (W.D. Wis, Aug. 31, 2023).
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`Unfortunately for Plaintiff, Sienifp does not help its case.
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`In Signify, large mail-orderretailer
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`Menard was sued by patentee Signify forselling LED lighting products that infringed six patents. 2023
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`WL 5647789, at *1, Menard filed third-party complaints against over a dozen companies that
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`manufactured the accused lighting products. /d. Fourof the third-party defendants asserted DJA cross-
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`claims against Signify for invalidity and noninfringement.
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`/d. In response, Signify moved to dismiss
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`those claimsfor lack of standing. Jd. In relevant part, the district court opined as follows:
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`... signify cites statements in Arris and Microsoft that a supplier
`has standing when it
`is “obligated” to indemnify its customer.
`Signify says that three of the four third-party defendants at issue
`have denied that they have a duty to indemnify Menard, so the court
`can't determine at this point whether they are so obligated. But the
`court of appeals has rejected that argument: “[W]e have neverheld
`that the validity of an indemnity demand,1.e., the applicability of an
`indemnity agreement to the demander's circumstances, needs to be
`conceded to establish subject-matter jurisdiction.” Mitek Systems,
`Inc. vy, United Services Automobile Association, 34 F 4th 1334, 1346
`(Fed, Cir, 2022). Rather,
`the question is whether there is a
`“reasonable potential” that
`the third-party defendants could be
`required to indemnify Menard. Microsoft, 755 F.3d at 905. That
`standard is met inthis case.
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`Richpower admits that it has a duty to indemnify Menard ... so
`Richpowerhas standing to sue even underSignify's view ofthe law.
`Luminex and Best Lighting have not conceded a duty to indemnify,
`but they admit in their answer that they have an agreement with
`Menard that
`includes
`language requiring them to “defend,
`indemnify, and hold Menard harmless from and against all claims,
`damages, and/or expense(s) on account of... any actual or alleged
`violation or infringement of... any patent... arising from Menard's
`use, sale or offering for sale of any goods covered by the purchase
`order and/or services provided by” the third-party defendants... .
`That admission is enough to show a reasonablepotential ofliability.
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`Alert Reel's claim is not as clear cut as the others. It denies that it
`has an indemnification agreement with Menard.
`... But Alert Reel
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`hasn't challenged the sufficiency of Menard's allegation to the
`contrary, and Alert Reel hasn't otherwise sought dismissal of
`Menard’s indemnity claim. Unless that claim is dismissed, there is
`a reasonable potential that Alert Reel could be required to indemnify
`Menard.
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`The court concludes that Richpower, Best Lighting, Alert Reel, and
`Luminex have standing to seek declaratory relief on claims related
`to the accused products that they manufacture.
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`Id, at *7—-8. The first excerpted paragraph from the Signify decision is of course correct-—and by
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`extensionso is Plaintiff in this case—that the Federal Circuit has held that an admissionofthe validity
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`of an indemnity claimis not required to establish a case or controversy. Butthis states just one of the
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`two guardrails erected by the Federal Circuit in this context.
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`It erected the opposite guardrail m
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`Microsoft, whenit explicitly rejected the notion that merely because a customer was sued, a supplier
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`had standing to sue. 755 F.3d at 904 (“To the extent that Appellees argue that they have a right to
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`bring the declaratory judgment action solely because their customers have been sued for direct
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`infringement, they are incorrect.”) Accordingly, something less than an admissionto indemnity and
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`something more than a mere customersuit is required in this context.
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`The second excerpted paragraph of Signifv finds the middle of the road when the Federal
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`Circuit discusses the positions of Luminex and Best Lighting. As the court notes, neitherof them (like
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`Plaintiff in this case) conceded a duty to indemnify Menard. But the court also observes that Luminex
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`and Best Lighting admitted in their answers® that their indemnification agreements included language
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`obligating themto
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`“defend, indemnify, and hold Menard harmless from and against all
`claims, damages, and/or expense(s) on account of any actual or
`alleged -violation or infringement of ... any patent arising from
`ves
`.
`4
`4
`+
`.
`Menard’s use, sale or offering for sale of any goods covered by the
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`the posture of the case in Signify was different insofar as the suppliers were joined to the main
`§ Obviously,
`infringement suit rather than having brought their own cases. This meant that the district court had the benefit of
`Menard’s third-party complaint against the suppliers, which prompted Luminex and Best Lighting to “admit in their
`answet”to the specific language in their indemnification agreement. Here, the only pleading available to this Court
`is Plaintiff's Complaint,
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`1}
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`purchase order and/or services provided by” the third party
`defendants.
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`2023 WI. 5647789, at *7. The Signify court found that this admission was enough to show a
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`reasonable potential of liability. Za.
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`In comparison, the Complaint in this matter is far less forthcoming than the referenced
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`answers in Signify, The Complaint asserts merely that there is an indemnification agreement
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`betweenPlaintiff and BioNTech, and that demands for indemnity have been made. (Compl. | 53.)
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`No details as to the language of the agreement are provided, Without more information in the
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`Complaint as to relevant indemnification terms, the Court finds that Plaintiff has not met its burden
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`to establish the reasonable potential ofits liability under that agreement. The Court therefore finds
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`that the Complaintfails to plead a case or controversy regarding Plaintiff's liability for indemnification.
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`3,
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`Additional Theories
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`Defendants raise two additional challenges to the Complaint’s showing of a case or
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`controversy. They first argue that Plaintiffs alleged economic harm is insufficient to confer
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`jurisdiction. Unsurprisingly, Plaintiff disagrees. They maintain that without a declaratory
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`judgment, “Acuitas faces (i) uncertainty with respect to its use of its technology free from the
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`threat of patent infringement, (ii) the possibility of liability under 35 U.S.C. § 271(b) forinducing
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`its customers’ infringement, and (iii) the possibility of indemnity obligationsto its customers under
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`their contracts.” (Opp. at 19.) The Court has already rejected the latter two arguments. What
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`remainsis Plaintiffs first argument. Plaintiff's language, however, is less than clear. To the extent
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`that Plaintiff is concerned aboutits own freedomto use LNPs without threat ofdirect infringement,
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`the Complaintalleges no facts supporting such a claim,7.¢., the Complaintfails to show “that there
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`is a substantial controversy, betweenparties having adverse legal interests, of sufficient immediacy
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`and reality to warrant the issuance of a declaratory judgment.” Medfmmune, 549 U.S. at 127. The
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`Case 3:23-cv-04200-ZNQ-TJB Document 35 Filed 05/20/24 Page 13 of 15 PagelD: 942
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`Court therefore finds that the Complaint states no case or controversy onthis issue. To the extent
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`that Plaintiff is concerned about its current or potential customers’ freedom to operate, this is an
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`economic theory that has already been rejected by the Federal Circuit. Arris, 639 F.3d at 1374
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`(finding that threat of infringement suit against existing client as an “economic injury” may confer
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`standing in cases challenging government action, but concluding that “we have not held that
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`econonuc injury alone is sufficient to confer standing in patent cases seeking a declaratory
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`judgment.”) The Court therefore furtherfinds that the Complaintstates not case or controversy on
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`this issue either.
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`Insofar as the Court concludes that the Complaint as a whole fails to plead a case or
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`controversy for the reasons set forth above,
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`it dees not reach Defendant’s second, case-or-
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`controversy argument for dismissing the additional five patents Plaintiff attempts to challenge in
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`the Complaint.’
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`B.
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`WHETHER THE COURT SHOULD EXERCISE ITS DISCRETION TO
`DISMISS THIS SUIT IN FAVOR OF THE CO-PENDING
`INFRINGEMENTSUIT
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`In the alternative, Defendants ask the Court to exercise its discretion to dismiss this suit in
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`favor of addressing validity and infringement in the New Jersey Suit. They argue that this case
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`would only complicate and neediessly expand the same issues already before the Courtin that
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`case,
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`(Ud. at 24.) According to Defendants, Plaintiffs failure to take over or even participate in
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`the New Jersey Suit indicates that Plaintiff's interests and Pfizer/BNT’s interests are also aligned
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`in that case. Cd. at 23.)
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`* Plaintiff's opposition raises the procedural point that Defendants should be precluded from these last two arguments
`because they failed to identify them as part of the undersigned’s pre-motion practice.
`(Opp. at 18.)
`In the ordinary
`course the Court would agree, but because the parties’ dispute is over subject matter jurisdiction (which cannot be
`waived) and the Court has an independent obligation to address that issue, it opines on Defendants’ final twopoints.
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`Plaintiff maintains that there is a justiciable controversy between the parties in this case.
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`(Opp. at 19-21.) It asserts that Pfizer and BioNTechhave already alleged that Plaintiffis necessary
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`io resolve Defendants’ patent claims against them. (/d. at 21.) It advises that it has participated in
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`the New Jersey Suit by attending the initial scheduling conference and discussing coordination
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`before the magistrate judge. (/d.)
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`For obvious reasons, the co-pending New Jersey Suit factors heavily into the Court’s
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`consideration of whether to exercise its discretion to dismiss this case, Clearly, a dismissal would
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`have the benefit of avoiding duplicativelitigation. With respect to competing remedies, the New
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`Jersey Suit
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`is broader
`
`in scope insofar as
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`the relief sought
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`there encompasses not just
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`determinations of infringement and invalidity, but also any injunctive relief and/or damages
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`against Pfizer and BioNTech that may be warranted. Admittedly, the New Jersey Suit is also
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`narrower in another sense because it implicates only five of the ten patents that Plaintiff hopes to
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`challenge here. But it is entirely likely that a ruling as to the first five of the patents in the New
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`Jersey Suit will inform the parties’ decision as to whether to proceedto litigate the remaining five.
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`Finally, Plaintiff is understandably eager to present its own inventorship story—it devotes sixteen
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`paragraphsof its Complaint and a portion of its briefing on this Motion to the issue—but it has not
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`articulated a reason whyits evidence cannotbe presented in the New Jersey Suit, particularly given
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`its claimsthat it is already coordinating efforts with Pfizer and BioNTech. Forall ofthese reasons,
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`the Court therefore finds that, even if it were to have found a justiciable controversy waspled, the
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`Court would exercise its discretion to dismiss this suit.
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`v.
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`CONCLUSION
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`Forthe reasons stated above, the Court will GRANT the Motion to Dismiss and DISMISS
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`ihe Complaint WITHOUT PREJUDICE based on lack of subject matter jurisdiction. An
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`appropriate Order will follow.
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`Date: May 20, 2024
`
`s/ Zahid N. Quraishi
`ZAHID N. QURAISHI
`UNITED STATES DISTRICT JUDGE
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