United States District Court, D. Delaware
GILEAD SCIENCES, INC., GILEAD PHARMASSET LLC, and GILEAD SCIENCES LIMITED, Plaintiffs,
ABBOTT LABORATORIES, INC. and ABBVIE, INC., Defendants.
GREGORY M. SLEET, District Judge.
Plaintiffs Gilead Sciences, Inc., Gilead Pharmasset LLC, and Gilead Sciences Limited (collectively, "Gilead") brought this patent infringement suit against defendants Abbott Laboratories, Inc. and AbbVie, Inc. (collectively, "AbbVie") on December 18, 2013, alleging that AbbVie falsely and knowingly represented to the U.S. Patent and Trademark Office ("PTO") that it invented highly valuable methods of treating the hepatitis C virus ("HCV") that were invented by Gilead and its predecessor Pharmasset, Inc. and others. (D.I. 2, ¶ 1.) On March 14, 2014, Gilead filed a First Amended Complaint. (D.I. 25.) Three weeks later, Gilead filed a Second Amended Complaint. (D.I. 31.) Gilead asserts three state law claims in Counts 9-11 of its Second Amended Complaint at issue for purposes of this Order: (1) violation of Cal. Bus. & Prof § 17200 of the California Unfair Competition Law ("UCL"); (2) slander of title; and, (3) breach of contract under Illinois law. ( Id., ¶¶ 266-85.) AbbVie then filed the present Motion to Strike under California's Anti-SLAPP statute (D.I. 35) and Motion to Dismiss for Failure to State a Claim on March 22, 2014. (D.I. 36.) For the reasons that follow, the court grants AbbVie's motion to strike and denies-in-part AbbVie's motion to dismiss.
This lawsuit arises out of the parties' effort to pursue a novel therapy for the treatment of HCV. (D.I. 31, ¶ 1-4.) The invention in dispute is a therapy using the drugs Sofosbuvir (PSI-7977) and Ledipasvir (GS-5885) in combination, to treat HCV patients with an interferon-free regimen, with and without ribavirin, in as short as twelve weeks. ( Id., ¶ 16.) The key component of the Combination is PSI-7977. Pharmasset developed PSI-7977. ( Id., ¶ 45.)
On February 12, 2009, Pharmasset and Abbott entered into a Bilateral Confidential Disclosure Agreement ("BCDA") allowing the two companies to exchange confidential information about their respective anti-HCV compounds. ( Id., ¶ 56.) The BCDA permitted the use of Pharmasset's confidential information for the sole purpose of evaluating their interest in a further business arrangement. ( Id., ¶ 57.) The confidentiality agreement was to last seven years. ( Id., ¶ 58.) On October 28, 2010, the BCDA was extended for a period of twenty years. ( Id., ¶ 60.)
Pharmasset and Abbott exchanged confidential information regarding PSI-7977 during negotiations. ( Id. at ¶ 61.) For example, during a meeting on July 31, 2009, Pharmasset: (1) informed Abbott that it expected sufficient toxicity data to support twelve-week treatment duration for its compoundsincluding PSI-7977by mid-2010; and, (2) disclosed toxicity results of PSI-7977's derivative: PSI-7851. ( Id., ¶ 63.) Next, Pharmasset granted Abbott access to an online "Data Room" from October 20 to November 11, 2009. ( Id., ¶ 68.) Abbott employeesincluding Drs. Bernstein, Podsadecki, Menon, Klein, and Awnidownloaded confidential Pharmasset documents, namely:
Internal reports of lab studies testing of PSI-7851 in combination with interferon and/or ribavirin.
Internal reports of lab studies testing PSI-7851 in combination with various other nucleoside inhibitors, nucleotide inhibitors, protease inhibitors, and an NS4A inhibitor, which concluded PSI-7851 has additive and synergistic effects when combined with these other compounds.
In vitro and in vivo comparisons of PSI-7851 with other Pharmasset compounds.
The chemical structure of PSI-7851 and several other Pharmasset compounds.
Information about the derivation of PSI-7977 from PSI-7851; the chemical structure, metabolic pathways, and toxicity assays of both compounds, and the finding that PSI-7977 is the most active against HCV.
The protocol for a study comparing relative bioavailability of PSI-7851 and PSI-7977 in both capsule and tablet form.
Pharmasset's plans to use PSI-7977 in a twelve-week study.
( Id., ¶ 69(a)(g).)
On November 1, 2010, Pharmasset and Abbott exchanged their final confidential information at a conference in Boston. ( Id., ¶ 70.) During this meeting, Pharmasset showed Abbott a slide deck discussing: (1) the status of PSI-7977 clinical trials; (2) Pharmasset's plans to test an interferon-free combination of PSI-7977 and a nucleotide polymerase inhibitor (PSI-938) in mid-2011; and (3) Pharmasset's plans to test PSI-7977 in a twelve-week treatment regimen. ( Id. ) Negotiations between Pharmasset and Abbott ended after this meeting. ( Id., ¶ 71.) Abbott continued in its pursuit of a twelve-week interferon-free anti-HCV therapy. ( See e.g., id., ¶ 91.)
In June 2011, believing its proprietary compound GS-5885 would successfully treat HCV when combined with Pharmasset's PSI-7977, Gilead's management recommended the acquisition of Pharmasset to its Board of Directors. ( Id., ¶ 78.) On November 21, 2011, Gilead announced the acquisition of Pharmasset. ( Id., ¶ 82.) Gilead completed its acquisition of Pharmassetincluding PSI-7977-on January 17, 2012. ( Id., ¶ 9.) As a result, Gilead is a party to the BCDA. ( Id., ¶ 280.)
Beginning in fall of 2011, Abbott began to file provisional patent applications claiming various aspects of the Combination. ( Id., ¶ 100.) On February 17, 2012, Abbott filed a provisional patent application ('276/'468) titled "Methods for Treating HCV." ( Id., ¶ 114.). Six individuals, whom Gilead alleges were "heavily involved" with Abbott's efforts to acquire Pharmasset, were among the named inventors: Drs. Bernstein, Brun, Menon, Klein, Awni, and Podsadecki. ( Id., ¶ 115.) The application claimed, inter alia, the method of treating HCV using the combination of PSI-7977 and GS-5885. ( Id., ¶ 116.) The application provided no actual clinical data support but, rather, relied on a predictive "mechanistic model" to determine the sustained virological responses of certain direct acting antiviral agent ("DAA") combination therapies. ( Id., ¶ 118.) Gilead argues AbbVie breached the contract by using Pharmasset's confidential information to support the predictive "mechanistic model." In August 2012, the eleven named inventors of the AbbVie provisional patent application signed declarations affirming that they were the true inventors of the disclosed subject matter in the patent applications. ( Id., ¶¶ 130-36.)
Subsequently, on May 1, 2013, the PTO issued notice of allowance for AbbVie's first two patent applicationsPatent Nos. 8, 466, 159 (the '159 patent") and 8, 492, 386 (the '386 patent"). ( Id., ¶ 150.) Later that day, after it learned of the issued patents, Gilead made contact with AbbVie regarding its previously filed Patent Cooperation Treaty ("PCT") Publication disclosing the Combination, which it believes is prior art relevant to the AbbVie patents. ( Id., ¶ 150-64.) Gilead urged AbbVie to disclose the alleged prior art to the PTO, but this was not done until ...