982 F. Supp. 2d 518
E.D. Pa.2013Background
- This consolidated action concerns whether the June Construct, an immunotherapy CAR construct, contains “material” under two MTAs (2003 and 2007) between Penn and St. Jude.
- The 2003 MTA defined Material broadly to include the Campana Construct, its progeny, derivatives, and accompanying know-how/data, with restrictions on human use and commercialization.
- The June Construct is Penn’s lentiviral version developed using St. Jude’s cDNA, with Penn arguing it is a modified derivative not containing material; St. Jude contends it includes material or a derivative of it.
- The court consolidated the contract action (12-4122) and patent action (13-1502), denied a separate-trial request, and addressed Penn’s Rule 12(b)(6) challenge to St. Jude’s willful infringement counterclaims and St. Jude’s summary-judgment motion.
- The court held the contract ambiguity could not be resolved on summary judgment; found genuine issues of material fact regarding the MTAs’ meaning and Penn’s understanding; and set discovery and trial schedules accordingly.
- The court also addressed timing for a possible post-filing willful infringement period, denying damages for the post-filing period beginning June 27, 2013.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the June Construct contain Material under the MTAs? | Penn contends the June Construct is a modified derivative, not containing Material. | St. Jude contends the June Construct contains and was made with Material or a con-tainting derivative. | Facially ambiguous contract; genuine issues of material fact remain; summary judgment denied on this issue. |
| Whether Penn’s willful infringement claim survives a Rule 12(b)(6) dismissal challenge | St. Jude seeks to dismiss willfulness; Penn argues Seagate standard applies to pleading. | St. Jude argues the standard can be applied at pleading and supports dismissal if not plausible. | Willful infringement claim survives in part; pre-suit knowledge shown; however post-filing liability limited per Seagate analysis. |
| Should the actions be consolidated and how should trials be allocated between legal and equitable claims? | Consolidation fosters efficiency; discovery and trial scheduling should proceed together. | Consolidation is appropriate; but St. Jude sought split handling. | Actions consolidated; jury trial rights preserved for legal claims with equitable relief addressed after trial on legal claims. |
| Is there a genuine issue of material fact as to the meaning of the MTAs based on course of performance and trade usage? | Penn argues course of performance and trade usage demonstrate a broader understanding of Material. | St. Jude argues terms are clear or inherently ambiguous and require factual resolution. | Facial ambiguity found; material facts regarding course of performance and trade usage survive summary judgment. |
Key Cases Cited
- Twombly v. Bell Atl. Corp., 550 U.S. 544 (S. Ct. 2007) (pleading standard: plausible claim required)
- Ashcroft v. Iqbal, 556 U.S. 662 (S. Ct. 2009) (pleading standard; plausibility required)
- Seagate Technology, LLC v. long, 497 F.3d 1360 (Fed. Cir. 2007) (willful infringement elements; objective recklessness standard)
- Beatrice Foods Co. v. New England Printing & Lithographing Co., 923 F.2d 1576 (Fed. Cir. 1991) (enhanced damages require willful infringement showing)
- Dairy Queen, Inc. v. Wood, 369 U.S. 469 (U.S. 1962) (seventh amendment and equitable vs. legal claims; sequencing of claims)
- Lockwood v. American Airlines, Inc., 50 F.3d 966 (Fed. Cir. 1995) (declaratory judgments and patent actions; forum decisions on legal vs. equitable nature)
- Owens-Illinois, Inc. v. Lake Shore Land Co., 610 F.2d 1189 (7th Cir. 1979) (seventh amendment considerations in declaratory judgments)