Case 1:22-cv-02229-MKV Document 70 Filed 04/11/23 Page 1 of 2
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`April 11, 2023
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`
`VIA ECF
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`Hon. Mary Kay Vyskocil
`United States District Court
`Southern District of New York
`500 Pearl Street, Room 2230
`New York, NY 10007
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`
`
`Re:
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`Acuitas Therapeutics Inc. v. Genevant Sciences GmbH et al.,
`Case No. 1:22-cv-02229-MKV
`
`
`Dear Judge Vyskocil:
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`I write on behalf of Defendants Genevant Sciences GmbH and Arbutus Biopharma Corp.
`(“Defendants”) in reply to Acuitas Therapeutics Inc.’s letter dated April 5, 2023. D.I. 69.
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`First, Acuitas does not dispute that, even if Defendants prevailed here, Pfizer Inc. and
`BioNTech SE (“Pfizer/BNT”) would argue that, as non-parties, they are not bound by this Court’s
`judgment. Accordingly, a final judgment in favor of Defendants here would still fail to resolve
`any of the infringement issues between Defendants and the actual vaccine manufacturers,
`Pfizer/BNT. Nor would such a judgment resolve Acuitas’s alleged indemnity obligation—the
`purported basis for Acuitas’s declaratory judgment action—because Pfizer/BNT’s infringement
`liability would remain unresolved. Indeed, Defendants assert two patents in the NJ Complaint that
`are not even at issue here. This case will not completely resolve the infringement dispute no matter
`the outcome. Thus Acuitas’s response only confirms that the Court should exercise its discretion
`to decline jurisdiction.
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`Second, Acuitas accuses Defendants of sophistry by “omit[ting] the name ‘Acuitas’ from
`their NJ Complaint so they could write a letter telling this Court they had done so.” D.I. 69 at 2.
`That is a spurious assertion with no basis in fact. The reason Acuitas was omitted in the NJ
`Complaint has nothing to do with the case here. Rather, consistent with Defendants’ earlier
`complaint against Moderna—which likewise did not name licensees or suppliers—Defendants’
`NJ Complaint names only the parties that infringe Defendants’ patents by making and selling the
`vaccine, Pfizer/BNT.
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`
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`quinn emanuel urquhart & sullivan, llp
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`Case 1:22-cv-02229-MKV Document 70 Filed 04/11/23 Page 2 of 2
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`Third, Acuitas’s criticism that Defendants engaged in “the slowest race to the courthouse
`ever” (D.I. 69 at 3) wrongly presupposes that Defendants intended to end up at the courthouse
`from the outset. There was no race. To the contrary, Defendants engaged in good faith licensing
`discussions with the actual vaccine manufacturers, Pfizer/BNT, but were unable to reach a
`resolution. D.I. 63 Ex. A ¶¶ 7, 54-62. Defendants’ engagement in licensing discussions rather
`than racing to the courthouse should be commended, not criticized.
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`Fourth, Acuitas argues that the NJ Complaint proves “that there is, and has been, an actual
`controversy.” D.I. 69 at 1-2. The existence of a controversy in April 2023 between Defendants
`and Pfizer/BNT, however, does not satisfy Acuitas’s burden of showing an actual controversy
`between Defendants and Acuitas as of the September 6, 2022 filing date of Acuitas’s Amended
`Complaint. Acuitas asserts that Defendants “report in their [April 4, 2023] complaint that the then-
`pending ‘discussions’ have failed.” D.I. 69 at 2-3. But Acuitas has no basis to assert that any
`actual controversy existed seven months ago—indeed, Acuitas was never part of, nor privy to,
`confidential discussions between Defendants and Pfizer/BNT.
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`Fifth, Acuitas asserts that Defendants “now admit” that the letters sent to Pfizer/BNT
`“were, in fact, 35 U.S.C. § 287(a) notices of infringement.” D.I. 69 at 3. That is a red herring.
`Defendants identified the letters as § 287(a) notices in both their opening and reply briefs. See
`D.I. 44 at 6; D.I. 55 at 4. Further, Acuitas mischaracterizes the NJ Complaint as supposedly
`alleging willful infringement based on Pfizer/BNT not acquiescing to threats in Defendants’ letters.
`D.I. 69 at 3. The NJ Complaint does not cite the letters as evidencing threats, but rather as inviting
`licensing and collaboration discussions, providing § 287(a) notice, and evidencing Pfizer/BNT’s
`knowledge of the patents, a required element of a willfulness claim. D.I. 63 Ex. A ¶¶ 75, 92.
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`Lastly, Acuitas takes issue with Defendants’ decision to file suit in the District of New
`Jersey (“DNJ”). But Acuitas does not dispute that DNJ is a proper venue under the patent venue
`rules. And DNJ is a familiar and popular forum for Pfizer, which since 2000 has filed more than
`50 patent cases there and has been sued there more than 10 times without having moved to transfer
`any of those cases (to Defendants’ knowledge). The infringing activity at issue is also closely
`related to DNJ: According to Pfizer publications, the business unit responsible for coordinating
`the global supply and distribution of Pfizer’s products, including presumably Pfizer/BNT’s
`vaccine, has its “leadership teams” in two primary locations globally, one of which is a 130-acre,
`10-building campus in New Jersey, less than an hour drive from the Trenton courthouse where
`Defendants’ case is pending.
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`The Court should grant Defendants’ motion to dismiss for the reasons explained in
`Defendants’ briefing.
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`Respectfully submitted,
` /s/ Raymond N. Nimrod
`Raymond N. Nimrod
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`cc:
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`All Counsel of Record (via ECF)
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