AntiCancer filed a lawsuit against Pfizer in the United States District Court for the Southern District of California for breach of a license agreement, breach of the duty of good faith and fair dealing, and unjust enrichment.  After that complaint was filed, AntiCancer discovered that scientists at Pfizer and Crown Bioscience, Inc. authored publications that allegedly infringed AntiCancer’s patents. he court granted a motion to amend the complaint to add patent infringement counts and to add Crown Bioscience as a party.

AntiCancer argues that the Contentions and claim charts adequately showed the connection between these claim elements and the information in the Pfizer and Crown Bioscience publications, and showed, prima facie, the presence of these elements in the accused activities. AntiCancer states that the degree of specificity in its Contentions and claim charts was in accordance with the Patent Local Rules, and further specificity and detail will require discovery of the defendants’ non-public, internal activities. AntiCancer stresses that the Patent Local Rules contemplate that discovery will follow from the Preliminary Infringement Contentions, and that it is not expected or intended that the Contentions must provide complete proof of infringement before the patentee has a meaningful opportunity to conduct discovery.

The technology involved was the use of green fluorescent protein linked to a gene promoter.  Specifically, two representative claim were (1) a method of monitoring the ability a promoter to promote expression of a gene by delivering cells to an animal that contain a fluorophore operatively linked to a promoter and subsequently observing the fluorophore, and (2) a nude mouse model for progression of human neoplastic disease that, among other things, “has sufficient immune-deficiency to allow a transplanted neoplastic tissue to grow at said primary site and metastasize to said secondary tumor site . . . .”

AntiCancer argues that there was no uncertainty as to the subject matter that was charged with infringement, and that the supplemental information sought by the district court would be obtained by discovery, as contemplated by the Patent Local Rules, as well as the broad discovery regime provided for by the Federal Rules of Civil Procedure. The district court referred to the requirement that “the degree of specificity under Local Rule 3-1 must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a ‘reasonable chance of proving infringement.’”

Although the district court described the Contentions as “woefully insufficient” and “vague,” and described AntiCancer as “acting unreasonably” and “disingenuous” in submitting the Contentions, there is no explicit finding of bad faith.   These findings, according to the Federal Circuit, do not amount to “bad faith.” Indeed, the district court’s observation that AntiCancer’s brief in opposition to the motion for summary judgment and the Hoffman declaration might meet the court’s concerns weighs against any inference of bad faith. . . . When a complaint meets the standards of the Federal Rules, and there has been no reasonable opportunity for discovery and evidentiary development of the issues, it is rarely appropriate to summarily decide the merits against the complainant.

Keyword: Anti-cancer, Patent, Patent infringement, Pfizer, Cancer