Case 1:22-cv-02229-MKV Document 72 Filed 05/16/23 Page 1 of 2
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`5/16/2023
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`May 16, 2023
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`The Honorable Mary Kay Vyskocil
`United States District Court
`Southern District of New York
`Daniel Patrick Moynihan U.S. Courthouse
`500 Pearl Street
`New York, NY 10007-1312
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`Re: Acuitas Therapeutics Inc. v. Genevant Sciences GmbH and
`Arbutus Biopharma Corp., Case No. 22-cv-02229-MKV
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`Dear Judge Vyskocil:
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`I write on behalf of Plaintiff Acuitas Therapeutics Inc. (“Acuitas”) to request a status conference at
`the Court’s convenience. The Defendants, Genevant Sciences GmbH and Arbutus Biopharma
`Corp. (together, “Arbutus”), have authorized me to inform the Court that they take no position
`regarding Acuitas’s request for a conference.
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`By way of background: Acuitas’s customers BioNTech and Pfizer sell the Pfizer-BioNTech
`COVID-19 vaccine called Comirnaty®, which uses lipid nanoparticles (“LNPs”) from Acuitas to
`deliver messenger RNA to the patient. After Arbutus claimed to have invented LNP technology
`used in BioNTech and Pfizer’s vaccine, and threatened BioNTech and Pfizer with patent
`infringement in letters identifying various Arbutus patents, Acuitas brought this action against
`Arbutus on March 18, 2022 [Docket Entry 1]. Acuitas seeks a declaratory judgment that Arbutus’s
`patents are invalid and/or not infringed by the Pfizer-BioNTech vaccine. The Court gave Acuitas
`the opportunity to amend its complaint [Docket Entry 42], and Defendants then moved to dismiss
`that First Amended Complaint, the motion having been fully briefed on November 16, 2022.
`[Docket Entries 44, 47, and 55.]
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`Acuitas now requests a conference because on April 4, 2023—well after briefing was completed on
`Acuitas’s motion—Arbutus carried through on its threat to sue Pfizer and BioNTech for patent
`infringement. Rather than suing in this Court, however, Arbutus sued Pfizer and BioNTech in New
`Jersey. See Arbutus Biopharma Corp. et al. v. Pfizer Inc. et al., No. 2:23-cv-01876-ZNQ (D.N.J.); see also
`Docket Entries 63, 69, and 70 in this case. Arbutus has thus created a second lawsuit addressing the
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`Case 1:22-cv-02229-MKV Document 72 Filed 05/16/23 Page 2 of 2
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`validity and infringement of patents at issue here. The schedule in the later-filed New Jersey lawsuit
`lags behind this case, with Pfizer and BioNTech’s time to answer, move, or otherwise respond to the
`New Jersey complaint being July 10, 2023. See Docket Entry 10 in the New Jersey case.
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`In light of these developments, Acuitas respectfully requests a status conference with the Court to
`discuss the pending motion to dismiss, the NJ Complaint, and the forum for resolution of the
`parties’ disputes.
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`Respectfully submitted,
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`/ Nicholas Groombridge /
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`Nicholas Groombridge
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`CC: All Counsel of Record (via ECF)
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`The parties are HEREBY ORDERED to appear for a Status
`Conference on June 27, 2023 at 11:30 AM. SO ORDERED.
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