`
`
`August 4, 2023
`
`The Honorable Mary Kay Vyskocil
`United States District Court
`Southern District of New York
`Daniel Patrick Moynihan Courthouse
`500 Pearl Street
`New York, NY 10007-1312
`
`Re: Acuitas Therapeutics Inc. v. Genevant Sciences GmbH and Arbutus Biopharma Corp.,
`Case No. 22-cv-02229-MKV
`
`Dear Judge Vyskocil:
`
`I write on behalf of Plaintiff Acuitas Therapeutics Inc. to notify the Court that Acuitas has filed a
`notice of dismissal without prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(A)(i). (Neither Defendant
`has filed an answer or summary judgment motion.) Acuitas also filed a declaratory-judgment action
`against Genevant and Arbutus in the United States District Court for the District of New Jersey.
`
`When Acuitas filed this action before Your Honor, it was the first case that addressed these issues.
`But after telling this Court that Acuitas’s declaratory-judgment action was unnecessary and implying
`that they had no intention of suing Acuitas’s customers Pfizer and BioNTech, Genevant and
`Arbutus then did precisely that—sued Pfizer and BioNTech on patents at issue in this case—but did
`so in the District of New Jersey.
`
`Arbutus’s and Genevant’s August 1, 2023 letter to this Court omits that Acuitas asked whether they
`would consent to transfer this action to New Jersey, and that they refused to do so. But their letter
`elucidates some of the reasons why this case, too, should be heard in that District. They assert that
`the New Jersey court “is uniquely suited to resolve the controversy between Pfizer,” BioNTech, and
`the Defendants. They note that Pfizer and BioNTech did not move “to dismiss” their New Jersey
`action “on the basis that Acuitas is a necessary party” and assert that “[t]he closest Pfizer and
`BioNTech have come” to doing so “is an affirmative defense that states, in its entirety, ‘Plaintiffs’
`Complaint improperly failed to name or join Acuitas Therapeutics, Inc.,’” but they omit that the
`cited defense is entitled, in all caps, “FAILURE TO JOIN A REQUIRED PARTY.” They also
`omit that Pfizer and BioNTech included an entire section in their New Jersey Answer and
`Counterclaims entitled “BIONTECH’S RELATIONSHIP WITH ACUITAS.”
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`
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`Case 1:22-cv-02229-MKV Document 80 Filed 08/04/23 Page 2 of 2
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`2
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`Acuitas very much appreciates the Court’s attention to this action. With Arbutus and Genevant
`having chosen to initiate a related lawsuit in New Jersey, however, and having refused to consent to
`transfer this case, it makes sense for Acuitas to withdraw this action and file in New Jersey as well.
`
`Respectfully submitted,
`
`
`/s/ Eric Alan Stone
`Eric Alan Stone
`
`
`CC: All Counsel via ECF
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`