Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01285-GMS Document 92 Filed 10/17/2005 Page 1 of 3
Yourio CoNAwAY STARGATT & TAYLOR, LLP
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October 17, 2005
BY E-FILE
The Honorable Gregory M. Sleet
United States District Court
844 King Street
Wilmington, DE 19801
Re: Enzon P/zarnzaceuticals, Inc. v. Phoenix Pharmacologics, Inc.
Civil Action No. 04-1285-GMS
Dear Judge Sleet:
Plaintiff Enzon Pharmaceuticals respectfully submits this reply letter in further support of
its request for leave to move for summary judgment (i) on its claim for ownership of U.S. Patent
6,183,738 and (ii) dismissing defendant Phoenix’s afhrmative defenses. As it stated previously,
Enzon believes the more efficient and surer course is for neither party to receive leave to move
for summary judgment. The numerous issues of technical fact, and the inferences to be drawn
hom even those few fact issues that are largely undisputed, asserted in Phoenix’s October ll
letter in opposition only confirms the merit of Enzon’s view that summary judgment practice by
either side would be inefficient, burdensome on the Court and the parties, and highly unlikely to
obviate the need for a trial. But if the Court is inclined to permit summary judgment motions,
Enzon should be permitted to file its motion for the reasons set forth in its October 3 letter and
further explained below.
A. No Genuine Factual Dispute Stands in the Way of Judgment Assigning the
’738 Patent To Enzon Because — Regardless of Whether Dr. Clark is a Sole
Inventor, a Co—inventor, or not an Inventor at all -—— the Subject Matter
Claimed in the Patent was Invented at Enzon
Phoenix’s scramble to isolate arbitrary slices of the ’738 patent that it says were not
invented at Enzon badly misses the point as a matter of both law and fact. An example of this is
its focus on a few linking groups included in the Markush group of claim 1, the carbohydrate or
epoxy groups, that it says were not made at Enzon.
Phoenix is wrong on the facts and mis—states the law. The basic test of inventorship (the
inventor is the person who conceives of all elements of a claim) does not, as Phoenix would have
the Court believe, mean that a person is permitted to write and receive a patent claim that
indisputably reads on inventions made by others while claiming inventorship for himself merely
by listing specific options within the genus of the true inventor.
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Case 1 :04-cv-01285-GIVIS Document 92 Filed 10/17/2005 Page 2 of 3
Younc CoNAwAY STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
October 17, 2005
Page 2
For example, consider a mechanical invention (a lamp) that includes elements A (a base)
and B (a pole) and C (a socket). May a former employee who knew that his employer had made
this invention with lamp poles of aluminum and steel proceed to obtain for himself a claim to a
lamp "wherein the pole is selected from the group consisting of aluminum, steel, and brass" on
the basis that brass had not been used at his former employer even though the inclusion of
aluminum and steel in the claim makes it read on work that belonged to his former employer?
Of course not. That would, however, be the result of Phoenix’s improper spin of the "all
elernents" rule of inventorship. Patent law does not allow a person to add optional elements to
an invention of others and then claim the entirety as their own which, even assuming Phoenix’s
version of the facts, is what was done here. See Sewall v. Walters, 21 F.3d 411, 416 (Fed. Cir.
1994).
Here, even under Phoenix’s statement of facts (which Enzon disputes), all Dr. Clark did
in claim 1 was add two possible linking groups to a list of others that it admits were done by
Enzon. That act does not enable him to claim for himself (and for Phoenix) Enzon’s work that
he was contractually obligated to assign by virtue of his employment and termination
agreements. And again, even under Phoenix’s statement of the facts, there is not a single claim
in the ’738 patent that carves out from inventions made at Enzon the work that Clark supposedly
did on his own after he left the company.
Phoenix does not even attempt to argue that Enzon employees did not conceive of PEG·
ADI utilizing the other linking groups recited in the ’738 patent: succinimide, amide, imide,
carbamate, ester, carboxyl, hydroxyl, tyrosine, cysteine, hisitidine. But even if Phoenix’s
assertion was correct, that would not entitle Clark to claim the genus for himself at Enzon’s
expense because the admitted conception at Enzon of numerous members of the Markush group
of claim 1 connotes conception of the entire genus that that listing represents. See Bilstad v.
Wakalopulos, 386 F.3d 1116, 1124-125 (Fed. Cir. 2004).
The same goes for Phoenix’s argument about the range of molecular weights of PEG.
Claim 1 recites the range of 1,000 to 40,000 Daltons, and Phoenix does not dispute that Enzon
synthesized compounds using PEG of 5,000 and 12,000 Daltons. Phoenix fails to mention that
internal Enzon documents clearly show discussion of 20,000 Dalton PEG as well, and that an
Enzon patent which predates the ’738 patent discloses use of PEG ranging Hom 600 to 60,000
Daltons for pegylation of ADI. But even without them, Clark does not become an inventor of
Enzon subject matter simply by writing a broader claim that includes Enzon work. Phoenix’s
attempt to distinguish among three different varieties of Mycoplasma ADI fails for essentially
the same reasons.
B. Phoenix Has Not Identified Any Genuine Issue of Material Fact That Would
Preclude Summary Judgment Dismissing its Affirmative Defenses
As asserted in Enzon’s brief in support of its Motion to Strike Defendant’s Affirmative
Defenses and reply brief in further support thereof (D.I. 44 and 66), Phoenix’s affirmative
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Case 1 :04-cv-01285-GMS Document 92 Filed 10/17/2005 Page 3 of 3
Youivo CoNAwAv STARGATT & TAYLOR, LLP
The Honorable Gregory M. Sleet
October 17, 2005
Page 3
if defenses are legally insufficient. Phoenix’s recent (and very belated) interrogatory response does
not change this state of affairs or raise genuine factual issues (for which Phoenix would bear the
burden of proof) that might avoid summary judgment.
As set forth in Enzon’s earlier briefing, economic or evidentiary prejudice is an element
of the defense of laches. Phoenix is not entitled to a presumption of laches because Enzon filed
this case less than six years after the ’738 patent issued, and thus Phoenix must carry the burden
of establishing the facts. No cognizable prejudice is identified in Phoenix’s papers. For the
same reasons, its defenses of estoppel and waiver would also fail to withstand summary
judgment.
Finally, as set forth in Enzon’s letter in opposition to Phoenix’s request to move for
summary judgment that Enzon’s claim is time barred, there would be numerous factual issues
. related to when the claim accrued, what damages have been suffered by Enzon within the statute
of limitations, and which state’s law should apply.
Conclusion
For the reasons set forth above and in its opening letter, Enzon
respectfully requests that, should the Court allow motions for summary judgment, Enzon be
granted leave to move for summary judgment (i) on its claim that the ’738 patent be assigned to
Enzon and (ii) dismissing Phoenix’s affirmative defenses. However, Enzon respectfully submits
that the complexity of the factual issues in this case make the grant of summary judgment
unlikely and that a more efficient and surer disposition would be on a full trial record.
Respectfully submitted,
losy W. Ingersoll (No. 1088)
JWl:cg
cc: Clerk of the Court (by e-filing and hand delivery)
Richard D. Kirk, Esquire (by e-filing)
Joseph Lucci, Esquire (by e-mail)
Michael Siem, Esquire (by e—mail)
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