Dexcel Pharma Technologies Ltd. et al v. Apotex Corp. et al
| Dexcel Pharma Technologies Ltd. and Dexcel Ltd. |
| Apotex Corp. and Apotex Inc. |
| 1:2018cv05190 |
| July 30, 2018 |
| US District Court for the Northern District of Illinois |
| Chicago Office |
| Cook |
| Ronald A Guzman |
| Mary M Rowland |
| Patent - Abbreviated New Drug Application(ANDA) |
| 28 U.S.C. § 1331 |
| None |
Docket Report
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| Filing 36 AFFIDAVIT of Dexcel Pharma Technologies Ltd. and Dexcel Ltd. regarding memorandum in support of motion #3 (Griffith, Christopher) |
| Filing 35 MINUTE entry before the Honorable Mary M. Rowland: Plaintiff's counsel shall make the certifications specified in the Court's prior order [Dkt 34] on the record in a formal filing. Mailed notice. (dm, ) |
| Filing 34 MINUTE entry before the Honorable Mary M. Rowland: Motion hearing held on 9/11/18. Plaintiffs' motion to quash defendants' subpoenas served on D'vorah Graeser, Graeser Associates International Inc and Dr. D. Graeser LTD under Fed. R. Civ. P. 45(d)(3)(A)(iii) #7 is granted in part, denied in part. The Court finds that any documents or deposition testimony being sought regarding non-attorney patent agent Dr. Graeser's application preparation and prosecution activities for Dexcel relating to the patents-in suit in front of the PTO are within the scope of the patent agent privilege. See In re Queen's Univ. at Kingston, 820 F.3d 1287, 1301 (Fed. Cir. 2016) ("Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks [outlined in 37 C.F.R. 11.5(b)(1)], or 'which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate' receive the benefit of the patent-agent privilege.") (citing 37 C.F.R. 11.5(b)(1)); see also Mold-Masters Ltd., v. Husky Injection Molding Sys. Ltd., No. 01 C 1576, 2001 WL 1268587, at *5 (N.D. Ill. Nov. 15, 2001). However, the patent agent privilege is not absolute and does not encompass communications, documents, or testimony that were not "necessary and incident" to prosecuting patents in front of the PTO. See Queen's Univ. at Kingston, 820 F.3d at 1301. See In re Queen's Univ. at Kingston, 820 F.3d 1287, 1301 (Fed. Cir. 2016). The Court finds that any communications, internally or externally, involving proceedings in front of the FDA are not protected; similarly, any communications or involvement by Dr. Graeser in analyzing prior art are not protected to the extent that they are not being used for purposes of prosecuting patents or other proceedings in front of the PTO. In lieu of a detailed privilege log, plaintiff's counsel shall certify by 9/21/18 whether Dr. Graeser had any communications or involvement internally or externally regarding proceedings in front of the FDA or regarding analysis of prior art that is was not used for a proceeding in front of the PTO. Responsive documents, if any, shall be produced by 9/28/18. To the extent any non-privileged responsive documents exist, Dr. Graeser may be deposed regarding the matters contained in those documents. Mailed notice. (dm, ) |
| Filing 33 MINUTE entry before the Honorable Mary M. Rowland: Telephonic motion hearing set for 9/11/18 at 2:30 PM central standard time. Counsel shall call 866-434-5269, access code 3751971. Counsel shall be ready to discuss Plaintiffs' motion to quash. Mailed notice. (dm, ) |
| Filing 32 ATTORNEY Appearance for Defendants Apotex Corp., Apotex Inc. by Eric J Choi (Choi, Eric) |
| Filing 31 MINUTE entry before the Honorable Ronald A. Guzman: Attorney Aaron S. Kukas' motion for leave to appear pro hac vice #30 on behalf of the defendants is granted. Mailed notice (is, ) |
| Filing 30 MOTION by Defendants Apotex Corp., Apotex Inc.Motion to Appear Pro Hac Vice - Filing Fee $150 Receipt No. 0752-14864531 (Lukas, Aaron) |
| Filing 29 MINUTE entry before the Honorable Mary M. Rowland: Plaintiff's motion for leave to file under seal #26 is granted. Motion hearing set for 8/28/18 is stricken. No appearance necessary. Mailed notice. (dm, ) |
| Filing 28 REPLY by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to motion to quash #7 (Griffith, Christopher) |
| Filing 27 NOTICE of Motion by Christopher Thomas Griffith for presentment of motion for leave to file #26 before Honorable Mary M. Rowland on 8/28/2018 at 09:45 AM. (Griffith, Christopher) |
| Filing 26 MOTION by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. for leave to file Under Seal (Griffith, Christopher) |
| Filing 25 SEALED REPLY by Dexcel Ltd., Dexcel Pharma Technologies Ltd. to MOTION by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to quash DEFENDANTS SUBPOENAS SERVED ON DVORAH GRAESER, GRAESER ASSOCIATES INTERNATIONAL INC. AND DR. D. GRAESER LTD. #7 (Griffith, Christopher) |
| Filing 24 RESPONSE by Apotex Corp., Apotex Inc.in Opposition to MOTION by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to quash DEFENDANTS SUBPOENAS SERVED ON DVORAH GRAESER, GRAESER ASSOCIATES INTERNATIONAL INC. AND DR. D. GRAESER LTD. #7 (Attachments: #1 Exhibit A (filed under seal), #2 Exhibit B - Part 1, #3 Exhibit B - Part 2, #4 Exhibit B - Part 3, #5 Exhibit B - Part 4, #6 Exhibit B - Part 5, #7 Exhibit B - Part 6, #8 Exhibit B - Part 7, #9 Exhibit B - Part 8, #10 Exhibit B - Part 9, #11 Exhibit C - Part 1, #12 Exhibit C - Part 2, #13 Exhibit C - Part 3, #14 Exhibit C - Part 4, #15 Exhibit C - Part 5, #16 Exhibit C - Part 6, #17 Exhibit C - Part 7, #18 Exhibit C - Part 8, #19 Exhibit C - Part 9, #20 Exhibit C - Part 10, #21 Exhibit C - Part 11, #22 Exhibit C - Part 12, #23 Exhibit C - Part 13, #24 Exhibit C - Part 14)(Ghattas, Tia) |
| Filing 23 MINUTE entry before the Honorable Mary M. Rowland: Defendants' oral motion to remove [Dkt. #20 ] is granted. The Clerk's Office is directed to remove [Dkt. #20 ] and the accompanying exhibits. Defendants should re-file public record versions of brief and accompanying exhibits. Mailed notice. (dm, ) |
| Filing 22 MINUTE entry before the Honorable Mary M. Rowland: The Court will allow Plaintiffs until 8/21/18 to file a short reply, up to 7 pages, to their motion to quash. Mailed notice. (dm, ) |
| Filing 21 MINUTE entry before the Honorable Mary M. Rowland: Defendants' motion for leave to file under seal #18 is granted. Motion hearing set for 8/21/18 is stricken. No appearance necessary. Mailed notice. (dm, ) |
| ORAL MOTION by Defendants to remove Dkt. #20 . (dm, ) |
| Filing 20 DOCUMENT removed per court order. (Ghattas, Tia) (. Modified on 8/13/2018 (aee, ). (Docket Text Modified by Clerks Office.) |
| Filing 19 NOTICE of Motion by Tia Christine Ghattas for presentment of motion for leave to file #18 before Honorable Mary M. Rowland on 8/21/2018 at 09:45 AM. (Ghattas, Tia) |
| Filing 18 MOTION by Defendants Apotex Corp., Apotex Inc. for leave to file Under Seal (Ghattas, Tia) |
| Filing 17 SEALED RESPONSE by Apotex Corp., Apotex Inc. to MOTION by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to quash DEFENDANTS SUBPOENAS SERVED ON DVORAH GRAESER, GRAESER ASSOCIATES INTERNATIONAL INC. AND DR. D. GRAESER LTD. #7 (Attachments: #1 Exhibit A)(Ghattas, Tia) |
| Filing 16 MINUTE entry before the Honorable Mary M. Rowland: Case called for motion hearing. Defendants failed to appear for today's hearing and has failed to respond to this motion that has been pending since 7/30/18. The Court will allow Apotex until noon on 8/10/18 to file a short response, limited to 7 pages, to the motion to quash. The Court will either set the motion for hearing or rule by mail. Mailed notice. (dm, ) |
| Filing 15 MINUTE entry before the Honorable Ronald A. Guzman: Attorney Catherine T. Mattes' motion for leave to appear pro hac vice #14 on behalf of the plaintiffs is granted. Mailed notice (is, ) |
| Filing 14 MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-14781662. Mattes, Catherine T. (Griffith, Christopher) |
| Filing 13 ATTORNEY Appearance for Defendants Apotex Corp., Apotex Inc. by Tia Christine Ghattas (Ghattas, Tia) |
| Filing 12 MINUTE entry before the Honorable Mary M. Rowland: Motion hearing on Plaintiff's motion to quash Defendants' subpoenas served on Dvorah Graeser, Graeser Associates International Inc., and Dr. D. Graeser Ltd. #7 is set for 8/7/18 at 10:00 a.m. Mailed notice. (dm, ) |
| Filing 11 MINUTE entry before the Honorable Ronald A. Guzman: Attorney Eric C. Stops' application to appear pro hac vice #9 on behalf of the plaintiffs is granted. Mailed notice (is, ) |
| Filing 10 MINUTE entry before the Honorable Ronald A. Guzman: Attorney Dominic F. Cerrito's application to appear pro hac vice #8 on behalf of the plaintiffs is granted. Mailed notice (is, ) |
| Filing 9 MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-14761978. Stops, Eric C. (Griffith, Christopher) |
| Filing 8 MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0752-14761865. Cerrito, F. Dominic (Griffith, Christopher) |
| Filing 7 MOTION by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to quash DEFENDANTS SUBPOENAS SERVED ON DVORAH GRAESER, GRAESER ASSOCIATES INTERNATIONAL INC. AND DR. D. GRAESER LTD. (Griffith, Christopher) |
| Filing 6 Pursuant to Local Rule 72.1, this case is hereby referred to the calendar of Honorable Mary M. Rowland for the purpose of holding proceedings related to: Plaintiff's memorandum in support of motion to quash defendants' subpoenas served on D'Vorah Graeser, Graeser Associates International Inc. and Dr. D. Graeser Ltd. under Fed.R.Civ.P. 45(d)(3)(A)(iii) #2 . (is, ) Mailed notice. |
| CASE ASSIGNED to the Honorable Ronald A. Guzman. Designated as Magistrate Judge the Honorable Mary M. Rowland. (jn, ) |
| Filing 5 ATTORNEY Appearance for Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. by Christopher Thomas Griffith (Griffith, Christopher) |
| Filing 4 DECLARATION of Christopher T. Griffith IN SUPPORT OF MOTION TO QUASH (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit E, #6 Exhibit F)(Griffith, Christopher) |
| Filing 3 MEMORANDUM IN SUPPORT OF MOTION TO QUASH (Griffith, Christopher) |
| Filing 2 MEMORANDUM in support of motion to quash by Plaintiffs Dexcel Ltd., Dexcel Pharma Technologies Ltd. to quash DEFENDANTS SUBPOENAS SERVED ON DVORAH GRAESER, GRAESER ASSOCIATES INTERNATIONAL INC. AND DR. D. GRAESER LTD. (Griffith, Christopher) (Docket text modified by Clerk's Office) |
| Filing 1 CIVIL Cover Sheet filed by Dexcel Pharma Technologies Ltd., Dexcel Ltd.; Filing fee $ 400, receipt number 0752-14758440.(Griffith, Christopher) (Docket text modified by Clerk's Office) |
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