D. Mass. Patent Litigation Update: July 2023

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Enanta Pharmaceuticals, Inc. v. Pfizer, Inc., No. 1:22-cv-10967, Judge Boal resolved five disputes surrounding Enanta’s motion to compel Pfizer to apply certain search terms and date ranges in searching its electronically stored information (ESI). searches.

First, Enanta proposed the search term *7321332. Noting that Pfizer used the code name “PF-07321332,” the Court found that Enanta’s proposed search term was overly broad and ordered Pfizer to run its proposed narrowing term of *7321332 w/5 (SARS* OR COVID*).

Second, the parties disputed whether the central proximity connector in the term (*protease* w/5 inhibitor*) w/40 (COVID* OR SARS* OR corona*) should be 5 or 40 words. The Court found that 20 words was the appropriate scope, ordering Pfizer to search on the term (*protease* w/5 inhibitor*) w/20 (COVID* OR SARS* OR corona*).

Third, the parties disputed when the date range of Pfizer’s search should end, with Pfizer proposing that searches could only capture documents dated before the filing of the suit and arguing that later documents are likely to be privileged. The Court found that Pfizer had not established that most post-suit documents were likely to be privileged but allowed Pfizer to construct searches to exclude communications with outside counsel, which the parties had agreed need not be included on a privilege log.

Fourth, the Court found Enanta’s proposed search term nitrile* OR cyano* OR benzothiaz* OR warhead OR electrophil* overly broad, instead ordering Pfizer’s proposal to run its proposed narrowed term of nitrile* OR cyano* OR benzothiaz* OR warhead OR electrophil* w/10 (SARS* OR COVID*).

Last, the Court found that Enanta’s proposed damages-related search term was overly broad for using a proximity connector of 30 and extending after the filing of suit and ordered Pfizer to run its proposed narrowing term of ((nirmatrelvir OR Paxlovid) w/5 (market* OR segment* OR compet* OR consumer* OR survey* OR forecast* OR projection* OR projected OR profit* OR pric*)) for the date range January 1, 2020 to June 21, 2022.

In Rasmussen Instruments, LLC v. DePuy Synthes Products, Inc., No. 1:20-cv-11807, after a jury found that DePuy willfully infringed Rasmussen’s asserted patent, Judge Hillman issued a permanent injunction that covered both activities in the United States and worldwide. Within the United States, the Court enjoined DePuy from making, using, offering to sell, selling, or inducing the enjoined products. And the Court also enjoined DePuy from selling the enjoined products elsewhere in the world without informing actual or potential customers that those products are not for sale or delivery to the United States, inducing the combination of enjoined products anywhere in the world to be supplied to the United States, or offering the enjoined products without notice that enjoined products provided from the United States may not be made or combined to form an enjoined product.

The Court retained jurisdiction to enforce its injunction.

In Virtek Vision International, Inc. v. Assembly Guidance Systems, Inc., No. 1:20-cv-10857, Judge Burroughs granted Virtek’s unopposed motion for leave to amend its infringement contentions pursuant to Local Rule 16.6(d)(5), which allows amendment only by leave of court on a showing of good cause. Virtek sought to incorporate new information from non-public statements made during recent depositions of Assembly’s representatives. The Court found that Virtek demonstrated good cause for amendment, acted diligently in moving to amend, and that Assembly will not be prejudiced by the proposed amendment. The Court thus granted the Motion.