United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO
FILE SECOND SUMMARY JUDGMENT MOTION RE: DKT. NO. 345
HAYWOOD S GILLIAM, JR., UNITED STATES DISTRICT JUDGE
Novartis Pharmaceuticals Corporation (“Novartis”)
seeks leave to file a second summary judgment motion. Dkt No.
345 (“Mot.”). The deadline for dispositive
motions has passed and the case is scheduled for trial in
June 2020. Nevertheless, Novartis argues that the Federal
Circuit's recent decision in Idenix Pharmaceuticals
LLC v. Gilead Sciences Inc., 941 F.3d 1149 (Fed. Cir.
2019), constitutes intervening law and provides good cause to
deviate from the scheduling and standing orders. The Court
finds this matter appropriate for disposition without oral
argument and the matter is deemed submitted. See
Civil L.R. 7-1(b).” For the reasons detailed below, the
Court DENIES the motion.
Court's standing order limits each party to filing one
motion for summary judgment and requires a party seeking to
exceed that limit to show “good cause.” Standing
Order for Civil Cases Before District Judge Haywood S.
Gilliam, Jr. (“Standing Order”) ¶ 17. The
Standing Order reflects policy disfavoring piecemeal
litigation in federal courts. See Peasley v.
Spearman, No. 15-cv-01769-LHK, 2017 WL 5451709, at *3
(N.D. Cal. Nov. 14, 2017); see also Allstate Fin. Corp.
v. Zimmerman, 296 F.2d 797, 799 (5th Cir. 1961)
(disapproving of successive motions because “parties
ought to be held to the requirement that they present their
strongest case for summary judgment when the matter is first
raised”). However, the Ninth Circuit has held that
“district courts have discretion to permit successive
motions for summary judgment, ” and that doing so may
“foster the ‘just, speedy, and inexpensive'
resolution of suits.” Hoffman v. Tonnemacher,
593 F.3d 908, 911 (9th Cir. 2010) (quoting Fed.R.Civ.P. 1).
Because of the potential for abuse, courts retain discretion
to “weed out frivolous or simply repetitive
motions.” Id. (quotation omitted).
Additionally, district courts have broad authority to manage
their dockets and deny untimely motions absent good cause.
Dietz v. Bouldin, 136 S.Ct. 1885, 1891-93 (2016);
Zivkovic v. Southern California Edison Co., 302 F.3d
1080, 1086 (9th Cir. 2002).
urges that a second summary judgment motion is warranted
here, in light of Idenix, because “all of the
asserted claims are invalid for lack of enablement . . .
.” See Mot. at 1- 2. Having considered
Novartis's arguments, the Court finds that Novartis fails
to show good cause to file a second motion for summary
judgment. First, Idenix does not represent a change
in law that justifies Novartis's delay in bringing the
motion. In Idenix, the Federal Circuit considered
whether claims reciting compounds having a certain chemical
formula, in addition to functional limitations requiring an
“effective” dose “for the treatment of a
hepatitis C virus infection, ” were enabled. 941 F.3d
at 1153-56. The court found that the claims were not enabled
because excessive experimentation was required to determine
which compounds of the recited formula were “effective
against HCV.” Id. at 1162. In so doing, the
court expressly noted that “[o]ur decision in Wyeth
and Cordis Corp. v. Abbott Laboratories compels this
conclusion.” Id. In Wyeth, the court
had similarly found that claims that recited both functional
and structural limitations were not enabled because a person
of ordinary skill in the art would have to test “tens
of thousands of compounds” to determine if they met the
functional limitations. 720 F.3d 1380, 1384-85 (Fed. Cir.
provides no explanation as to why it could not have brought
its desired motion previously under Wyeth. A cursory
examination of both cases shows that Idenix applies
the rule established in Wyeth and addresses a
“striking[ly]” similar set of facts. 941 F.3d at
1162. Accordingly, Novartis fails to show that it acted
diligently, and therefore that it has good cause to file the
second motion for summary judgment after the dispositive
motion deadline. See Johnson v. Mammoth Recreations,
Inc., 975 F.2d 604, 609 (9th Cir. 1992) (explaining that
the “good cause” standard for modifying a
schedule “primarily considers the diligence of the
party seeking the amendment”).
the decision in Idenix does not apply to the current
facts. The court in Idenix addressed the question of
whether “practicing the full scope of the claims would
have required excessive experimentation.” 941 F.3d at
1156, 1163. The claims there were limited to the “set
of compounds that are effective for treatment of HCV.”
Id. at 1155 (quoting the claim construction order).
Thus, because the specification did not describe which
compounds were effective for treatment of HCV, it failed to
enable “the full scope of the claims.”
Id. at 1163. Here, in its opening brief, Novartis
argues that the asserted claims are not enabled because the
specification does not specify the compounds that are
effective at inhibiting kinase. But kinase inhibition is not
a limitation of the asserted claims. See Dkt. No.
345-2 (“Proposed MSJ”) at 2:22-5:24 (quoting
asserted claims). At most, only claims 11 and 12 of the
'640 Patent even recite functional limitations-but those
limitations describe “treating a subject suffering from
melanoma, thyroid cancer or colorectal cancer, ” not
inhibiting kinase. See id. Thus, the specifications
need not enable compounds that inhibit kinase to allow a
person of ordinary skill in the art to practice “the
full scope of the claims, ” and Novartis's motion
will not resolve the dispute. See Idenix, 941 F.3d at
changes tack in its reply, suggesting that its motion is also
proper under the utility standard of 35 U.S.C § 101, as
utility is incorporated into the enablement analysis.
See Dkt. No. 353 at 2, 5-6. Although Novartis is
correct that utility has been incorporated into the
enablement standard, the two are not coextensive and require
different types of analysis. See In re '318 Patent
Infringement Litig., 583 F.3d 1317, 1323 (Fed. Cir.
2009) (noting enablement is “closely related” to
utility); Rasmusson v. SmithKline Beecham Corp., 413
F.3d 1318, 1323 (Fed. Cir. 2005) (explaining how lack of
usefulness leads to a rejection under both enablement and
requires a claimed invention to have “significant and
presently available benefit to the public.”
Grunenthal GMBH v. Alkem Labs. Ltd., 919 F.3d 1333,
1345 (Fed. Cir. 2019) (quoting In re Fisher, 421
F.3d 1365, 1371 (Fed. Cir. 2005)). The bar for utility is
“not high” and only fails if the invention
“is totally incapable of achieving a useful
result.” Id. (quoting Brooktree Corp. v.
Adv. Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir.
1992)); see also Id. (explaining that “any
pharmacological activity” satisfies utility). If a
patent alleges a benefit, “[a]ll that is necessary is
evidence that a POSA would accept the claimed utility as
correct.” Id. at 1346. Enablement, by
contrast, requires a patent specification to describe how to
“make” and “use” the invention
without undue experimentation. In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988); 35 U.S.C. 112. “If a patent
claim fails to meet the utility requirement because it is not
useful or operative, then it also fails to meet the
how-to-use aspect of the enablement requirement.”
In re '318 Patent Infringement Litig., 583 F.3d
however, Idenix does not address utility or its
relationship with enablement at all. Novartis provides no
explanation for why it could not have argued lack of utility
in its first motion for summary judgment, filed before the
dispositive motion deadline. As both parties acknowledge,
this case is at a late stage, with pretrial filings submitted
and trial set. Given these circumstances, Novartis simply has
not shown good cause to reopen dispositive motion briefing to
argue lack of enablement or lack of utility.
the Court DENIES Novartis's motion for
leave to file a second summary judgment motion.
 Novartis argues in its reply that
“every claim in the asserted patents is directed to
compounds that are useful as kinase inhibitors.” Dkt.
No. 353 (“Reply”) at 6:10-11. However,
“[i]t is a bedrock principle of patent law that
‘the claims of a patent define the invention to which
the patentee is entitled the right to exclude.'”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citation omitted). Since kinase
inhibition is not required by the claims, it is not required
to practice the claimed invention. See CFMT, Inc. v.
Yieldup Int'l Corp., 349 F.3d 1333, 1338 (Fed. Cir.
2003) (rejecting ...