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Vaxiion Therapeutics, Inc. v. Foley & Lardner LLP

February 27, 2008

VAXIION THERAPEUTICS, INC., PLAINTIFF,
v.
FOLEY & LARDNER LLP; AND DOES 1-20, INCLUSIVE, DEFENDANT.



The opinion of the court was delivered by: Irma E. Gonzalez, Chief Judge United States District Court

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR LEAVE TO AMEND ANSWER

[Doc. No. 36]

Presently before the Court is defendant Foley & Lardner LLP's motion for leave to file a first amended answer and counterclaims. For the following reasons, the motion is granted as to the proposed affirmative defenses and denied as to the proposed counterclaims.

BACKGROUND

Factual Background

This case arises out of a soured attorney-client relationship between plaintiff and the law firm that handled plaintiff's patent applications, Foley & Lardner LLP ("defendant"). Plaintiff, a biomedical technology company, developed a novel type of bacterial "minicell," which it wished to patent. (Complaint ¶ 5.) Plaintiff retained defendant to prosecute the patent applications for its "minicell" invention and defendant filed the first provisional patent application on May 24, 2001 on behalf of plaintiff.*fn1 (Id. ¶ 7.) According to the rules of the United States Patent and Trademark Office ("USPTO"), all subsequent revisions of this May 24, 2001 provisional patent application retain May 24, 2001 as the "priority date."*fn2 (Id.) On February 25, 2002, defendant filed a revised and updated provisional application for plaintiff's invention. (Id.)

Pursuant to the Paris Cooperation Treaty, international patent protection may be obtained from the original filing date of the U.S. provisional application (here, May 24, 2001), if the applicant files for an international patent ("PCT") within one year of filing the U.S. patent application.*fn3 According to plaintiff, during the patent application process for the "minicells," plaintiff's then-CEO, William Gerhart, called Foley & Lardner attorney Richard Warburg to remind him to file the appropriate PCT applications within the one year window. (Id. at ¶ 9.) Plaintiff claims Warburg gave assurances the applications would be properly filed. (Id.) However, defendant did not file plaintiff's PCT within the one year limit (by March 24, 2002), but filed the PCT applications on May 28, 2002, four days late. Thus, February 25, 2002, the date the revised application was filed, became the PCT priority date. (Id. ¶ 10.)

Plaintiff alleges this oversight had adverse consequences because an Australian competitor, EnGene, filed a U.S. patent application on October 15, 2001 that covers some of the same intellectual property as plaintiff's May 24, 2001 patent application. EnGene filed its PCT within the one-year window, and thus received international patent protection from their U.S. filing date of October 15, 2001. (Id. ¶ 10.) This date is ahead of plaintiff's PCT priority date, February 25, 2002, which according to plaintiff would have been May 24, 2001 if defendant had filed the PCT application on time.

In 2003, EnGene approached plaintiff regarding possible cross-licensing agreements. In the midst of due diligence, plaintiff discovered defendant also handled EnGene's PCT applications. (Id. ¶ 12.)

On February 27, 2006, the USPTO issued plaintiff a patent titled "Eubacterial Minicells and their use as vectors for nucleic acid delivery and expression." (Id. ¶ 11.) This patent is numbered 7,183,105 and is hereinafter referred to as the " '105 patent."

Procedural Background

Plaintiff filed suit in Superior Court in San Diego, California, on December 28, 2006. Defendant removed the case to this Court on February 9, 2007. (Doc. No. 1.) Defendant's answer, captioned as a general denial, was filed in state court and then in this Court as part of the notice of removal. (Id.) On April 12, 2007, the Court denied plaintiff's motion to remand. (Doc. No. 14.)

Defendant filed a motion to amend its answer on January 14, 2008. (Doc. No. 36.) Plaintiff opposed the motion on February 8, 2008. (Doc. No. 44.) On February 15, 2008, defendant filed a reply. (Doc. No. 49.) The Court held oral argument on February 25, 2008, with Karen Frostrom, Vincent C. Bartolotta, Jr., and Dan Chambers appearing for ...


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