`
`quinn emanuel trial lawyers | new york
`51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL (212) 849-7000 FAX (212) 849-7100
`
`WRITER'S DIRECT DIAL NO.
`(212) 849-7412
`
`WRITER'S EMAIL ADDRESS
`raynimrod@quinnemanuel.com
`
`April 4, 2023
`
`VIA ECF
`
`Hon. Mary Kay Vyskocil
`United States District Court
`Southern District of New York
`500 Pearl Street, Room 2230
`New York, NY 10007
`
`Re:
`
`Acuitas Therapeutics Inc. v. Genevant Sciences GmbH et al.,
`Case No. 1:22-cv-02229-MKV
`
`Dear Judge Vyskocil:
`
`I write on behalf of Defendants Genevant Sciences GmbH and Arbutus Biopharma Corp.
`(collectively, “Defendants”) to inform the Court that today, April 4, 2023, Defendants sued Pfizer
`Inc. and BioNTech SE (“Pfizer/BNT”) in the U.S. District Court for the District of New Jersey
`(“NJ Complaint”). See Arbutus Biopharma Corp. et al. v. Pfizer Inc. et al., No. 2:23-cv-01876-
`ZNQ (D.N.J.). The NJ Complaint, attached hereto as Exhibit A, alleges that Pfizer/BNT’s making,
`using and/or selling of their COVID-19 vaccine infringes five U.S. patents owned by Arbutus and
`licensed to Genevant.
`
`The NJ Complaint, which was filed after licensing discussions between Defendants and
`Pfizer/BNT failed to result in a settlement, strengthens Defendants’ pending motion to dismiss this
`action for lack of subject matter jurisdiction or in the Court’s discretion (ECF No. 43). First,
`although jurisdiction here is to be assessed as of the date on which Acuitas filed its Complaint
`rather than as of today, the NJ Complaint does not mention Acuitas or allege indirect infringement,
`thus showing that no controversy exists between Acuitas and Defendants even as of today.
`Second, two patents asserted in the NJ Complaint are not at issue in this action, confirming that
`Defendants’ controversy with Pfizer/BNT cannot be entirely resolved here. Third, whereas a New
`Jersey judgment would resolve Defendants’ U.S. patent infringement controversy with Pfizer/BNT
`(the actual makers and sellers of the vaccine), Pfizer/BNT may argue that as non-parties to this
`action they are not bound by a judgment issued here, potentially necessitating duplicative
`litigation.
`
`quinn emanuel urquhart & sullivan, llp
`ATLANTA | AUSTIN | BOSTON | BRUSSELS | CHICAGO | DOHA | HAMBURG | HONG KONG | HOUSTON | LONDON | LOS ANGELES | MANNHEIM |
`MIAMI | MUNICH | NEUILLY-LA DEFENSE | NEW YORK | PARIS | PERTH | RIYADH | SALT LAKE CITY | SAN FRANCISCO | SEATTLE | SHANGHAI |
`SILICON VALLEY | STUTTGART | SYDNEY | TOKYO | WASHINGTON, DC | ZURICH
`
`
`
`Case 1:22-cv-02229-MKV Document 63 Filed 04/04/23 Page 2 of 2
`
`Respectfully submitted,
` /s/ Raymond N. Nimrod
`Raymond N. Nimrod
`
`cc:
`
`
`All Counsel of Record (via ECF)
`
`
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`2
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