Free Letter - District Court of Delaware - Delaware

Case 1:O7—cv—OO156-JJF Document 153 Filed 08/O1/2008 Page 1 of 2
Monnrs, NICHOLS, Ansrrrr & TUNNELL LLP
NORTH MARKET STREET
P.O. Box 1347
WILMINGTON, D1=:r.AwA1z.rt 19899-1347
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JA¤r< B. BLUMENFELD 302 658 3989 FAX
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202 425 3012 Flux
_jl>[email protected] August 1,
The Honorable Joseph J. Farnan Jr. VIA ELECTRONIC FILING
United States District Court
For the District of Delaware
844 North King Street
Wilmington, DE 19801
Re: PDL Bi0Pharma, Inc. v. Alexion Pharmaceuticals, Inc.
C.A. No. 07-l56 QJJF)
Dear Judge Farnan:
On behalf of plaintiff, PDL BioPhar1na, Inc., we write in response to the Court’s
instruction to apprise “the Court of the status of their negotiations regarding PDL‘s proposed
covenant” (D.l. 148 at 14 n.3) and to defendant Alexion Pharmaceuticals, lnc.’s letter of July 31,
2008 (D.I. 152).
Alexion asks that the Court construe a term that, as Alexion acknowledges, does
not appear in any of the claims that PDL is asserting: "hypervariable region." For two reasons,
the Court does not need to construe that term at this juncture.
First, pending before the Court is PDL’s Motion to Dismiss Alexion’s
Declaratory Judgment Corurterclaims as to Uuasserted Patent Claims (D.I. 67). As PDL there
explains, (1) as a matter of law, Alexion could not demonstrate the required injury-in-fact
(D.I. 67 at 4-7) and (2) as a matter of fact, the unasserted claims were not part of PDL’s
complaint or interrogatory responses, and Alexion explicitly took the position in its interrogatory
responses, for approximately one year in this litigation, that the unasserted claims were not part
ofthe case (D.I. 67 at 8-9). The Court heard oral argument on that fully briefed motion (D.I. 86),
and if the Court grants that motion, there is no need to entertain new briefing and oral argument
on a claim term that is absent from the asserted claims.
Second, if — but only if — the Court does not grant PDL’s pending motion to
dismiss, Alexion apparently disputes whether PDL’s proposed covenant would moot any
controversy that Alexion is trying to create regarding unasserted claims. PDL proposed covenant
was that:

Case 1:O7—cv—OO156-JJF Document 153 Filed 08/O1/2008 Page 2 of 2
The Honorable Joseph J. Farnan Jr.
August 1, 2008
Page 2
PDL, on behalf of itself and any successors-in-interest to its rights
under the patents-in-suit, hereby unconditionally and irrevocably
covenant not to assert that any activities by Alexion regarding its
currently manufactured and FDA-approved humanized antibody,
Soliris, as manufactured, sold, offered for sale and prescribed only
for PNH, whether occurring before or after the date of this
covenant, infringe any claim of the U.S. Patent Nos. 5,69,761,
5,693,762, and 6,180,370 except for the following claims [which
are the asserted claims]:
U.S. Patent No. Asserted Claims
5,693,761 1, 2, 6, 8, 17, 18, 26, 33, 35
‘ 5,693,762 1, 2, 3,10,11 12 13, 14, 16,18,19
6,180,370 1, 2, 5, 6, 25, 26, 27, 28
PDL believes that the proposed covenant is co—extensive with Alexion’s FDA
approval for its accused humanized antibody, Soliris, and thus that the covenant would moot any
controversy Alexion now posits is created by its counterclaims. Should the Court deny PDL’s
pending motion to dismiss for lack of subject matter jurisdiction (D.I. 67), PDL requests that the
Court direct the parties to brief that issue. The Court need engage in additional claim
construction only if (1) it denies the pending motion to dismiss for lack of subject-matter
jurisdiction (D.I. 67); (2) it concludes after briering that the proposed covenant is not sufficient;
and (3) Alexion rejects any further covenant that PDL might propose in light of the Court’s
ruling on the effect of the existing proposed covenant.
Finally, although Alexion’s opening claim construction brief asserted that
“framework substitutions" was one of “[t]w0 key limitations of the patents-in·suit" (D.l. 96 at 4),
we agree with Alexion that the Court need not construe that phrase.
Respectfully,
Blurnenfe1d
JBB/dlb
cc: Clerk of Court (Via Hand Delivery)
John W. Shaw, Esquire (V ia Electronic Mail and Hand Delivery)
Gerald J. Flattman, Jr., Esquire (Via Electronic Mail)
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