United States District Court, D. New Jersey
CLAIRE C. CECCHI UNITED STATES DISTRICT JUDGE
the Court is EMD Serono, Inc. and Pfizer Inc.'s
("Serono") motion for partial summary judgment as
to Biogen MA, Inc.'s ("Biogen") claim of lost
profits. ECF No. 271. Bayer Healthcare Pharmaceuticals Inc.
("Bayer") filed a response to Serono's motion.
ECF No. 275. Biogen opposes Serono's motion. ECF Nos.
277, 292. The parties also submitted letters to the Court
pertaining to Serono's motion. ECF Nos. 297, 461, 467,
472, 739, 753. Having considered the parties' written
submissions and oral presentations, for the reasons discussed
below the Court denies Serono's motion.
FACTUAL AND PROCEDURAL BACKGROUND
consolidated patent infringement action, Biogen MA, Inc.
("Biogen") has asserted claims from U.S. Patent No.
7, 588, 755 (the "'755 patent") against Bayer,
Serono, and Novartis Pharmaceuticals Corp.
("Novartis"). The '755 patent claims a method
for immunomodulation, or treating viral diseases, cancers, or
tumors, by administering to a patient a recombinant
polypeptide-human interferon beta
("interferon-β")-that is produced by a
non-human host transformed by a recombinant DNA molecule.
makes and sells Avonex®, a recombinant interferon-β
product for the treatment of multiple sclerosis
("MS"). Serono makes and sells a competitor
recombinant interferon-β product Rebif® for the
treatment of MS. Rebif® has been on the market in the
United States since 2002. Serono's Statement of Material
Facts Not in Dispute, ECF No. 272-10 ("Serono SOF")
¶ 3. By 2009, when the '755 patent issued,
Rebif® was generating revenue of approximately $1 billion
per year. Id.
October of 2000, Serono and Biogen entered into a Nonsuit and
Option Agreement giving Serono certain rights, including an
option to obtain a license to the patent application that
later issued as the '755 patent. Serono SOF ¶ 1; ECF
No. 272-1. Serono's option to obtain a license to the
'755 patent was available to Serono when the '755
patent issued in September of 2009. Serono SOF ¶ 2. To
date, Serono has not exercised its option, and the option
remains available. Id. The Nonsuit and Option
Agreement also contains a XXXXX ECF
277, at 8.
27, 2010, Bayer filed suit against Biogen seeking a
declaration that Bayer does not infringe the '755 patent
claims and that the '755 patent claims are invalid. ECF
No. 1. On May 28, 2010, Biogen initiated a separate
proceeding by filing suit against Bayer, Serono, and
Novartis. C.A. No. 10-2760, ECF No. 1. Biogen's
infringement claims against Bayer and Novartis are based on
the sale ofinterferon-β products Betaseron® and
Extavia® in the United States for the treatment of MS via
immunomodulation. C.A. No. 10-2760, ECF No. 1 at ¶¶
50-73, ECF No. 61 at ¶¶ 60-83. Biogen's
infringement claims against Serono are based on the sale of
Rebif® in the United States for the treatment of MS via
immunomodulation. C.A. No. 10-2760, ECF No. 1 at ¶¶
32-49, ECF No. 61 at ¶¶ 42-59. Biogen seeks relief
from Serono, Bayer, and Novartis under several remedies,
including lost profits. C.A. No. 10-2760, ECF No. 61 at 20.
the pendency of this case, Serono and Biogen arbitrated
whether the Nonsuit and Option Agreement was invalid,
unenforceable, terminated, and void. On February 2, 2012, the
arbitral tribunal ruled that the agreement is valid and
enforceable, and that Serono's option to obtain a license
remains in effect. ECF No. 272-2 ¶ 56. XXXXX In September of 2012, the Court confirmed
the tribunal's award. ECF No. 210.
October 27, 2017, the Court granted Bayer's and
Serono's motions for severance. ECF No. 743. With respect
to Biogen's action against Serono, a jury trial is
scheduled to begin on January 18, 2018. Id.
judgment is appropriate if the "depositions, documents,
electronically stored information, affidavits or
declarations, stipulations... admissions, interrogatory
answers, or other materials" demonstrate that there is
no genuine issue as to any material fact, and, construing all
facts and inferences in a light most favorable to the
non-moving party, "the movant is entitled to judgment as
a matter of law." Fed.R.Civ.P. 56(a), (c); see also
Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986);
Pollock v. Am. Tel. & Tel. Long Lines, 794 F.2d
860, 864 (3d Cir. 1986). The party moving for summary
judgment bears the burden of demonstrating the absence of a
genuine issue of material fact. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 256 (1986). A fact is
"material" if a dispute about that fact "might
affect the outcome of the suit under the governing
[substantive] law," and a "genuine" issue
exists as to that fact "if the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party." Id. at 248. The Court's role is to
determine whether there is a genuine issue for trial, not to
weigh the evidence and decide the truth of the matter.
Id. at 249.
patent owner, upon a finding that a patent is infringed, is
entitled to recover "damages adequate to compensate for
the infringement, but in no event less than a reasonable
royalty." 35 U.S.C. § 284. Having prevailed on
liability, a patent owner may receive a reasonable royalty or
lost profits. Asetek Danmark A/S v. CMI USA Inc.,852 F.3d 1352, 1362 (Fed. Cir. 2017). 'To recover lost
profits, a patent owner must prove a causal relation between
the infringement and its loss of profits."
Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d
1229, 1240 (Fed. Cir. 2017) (internal quotation marks and
citation omitted). In other words, the patent owner must show
a reasonable probability that, "but for" the
infringing activity, it would have made the additional
profits enjoyed by the infringer. Micro Chemical, Inc. v.
Lextron, Inc.,318 F.3d 1119, 1122 (Fed. Cir. 2003);
Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d
1275, 1285 (Fed. Cir. 2017) ...