Pacira Pharmaceuticals, Inc. v. Research Development Foundation

District Court, D. Nevada·Decided August 9, 2024·No. 2:21-cv-02241·Unknown

Opinion

1 2 UNITED STATES DISTRICT COURT DISTRICT OF NEVADA 3

4 Pacira Pharmaceuticals, Inc., Case No. 2:21-cv-02241-CDS-DJA

5 Plaintiff Order Denying Research Development Foundation’s Motion to Compel and 6 v. Reopen Discovery

7 Research Development Foundation, [ECF No. 183] 8 Defendant

9 10 Plaintiff Pacira Pharmaceuticals, Inc. sues defendant Research Development Foundation 11 (“RDF”) in this declaratory-judgment action arising out of a long-standing agreement between 12 the parties. RDF moves to compel Pacira to produce certain documents from another case 13 involving Pacira and a third party. ECF No. 183. RDF also requests to reopen discovery so that it 14 might conduct an additional deposition regarding the documents. Id. Because I find that RDF’s 15 motion to compel is untimely, I deny the motion to compel and deny RDF’s request to reopen 16 discovery as moot. 17 I. Background 18 A. Procedural background 19 RDF is a Nevada nonprofit that transfers technology from laboratories to companies by 20 obtaining patents and licensing research discoveries. ECF No. 18 at 13. Pacira is a California 21 pharmaceutical company. Compl., ECF No. 1 at 2; ECF No. 18 at 13. In 1994, RDF assigned Pacira 22 certain intellectual property, giving Pacira the exclusive right to manufacture and sell products 23 employing that property, in exchange for a royalty on some of Pacira’s gross revenues. ECF No. 24 99-1 at 5, 6, 11. The product relevant to this suit is called EXPAREL, an anesthetic that Pacira 25 manufactures using two processes: a 45-liter (45L) process and a 200-liter (200L) process. 26 1 Pacira initially produced EXPAREL using the 45L manufacturing process, which relied 2 on RDF’s original patented technology, Patent No. 9,585,838. ECF No. 1 at 7–8; ECF No. 18-4 at 2. 3 Under the parties’ agreements, Pacira paid RDF royalties on sales of EXPAREL made using the 4 ’838 patent. ECF No. 1 at 7. However, in 2013, Pacira began producing EXPAREL on the larger, 5 200L scale. Id. at 8. Pacira claims that it does not rely on RDF’s technology to do so and, in 2021, it 6 patented the new process under Patent No. 11,033,495. ECF No. 1 at 8; ECF No. 18-5 at 2. 7 Pacira believes that it does not owe RDF royalties on sales of EXPAREL produced using 8 the ’495 patent. RDF believes that it does. Through this lawsuit, the parties ask me to resolve this 9 dispute, amongst others. 10 Discovery substantively closed on January 13, 2023. Order, ECF No. 81. On August 8, 11 2023, I decided the parties’ competing motions for summary judgment. Order, ECF No. 152. In 12 doing so, I determined that there remains a genuine dispute of material fact regarding whether the 13 ’495 patent is “related to” the ’838 patent such that Pacira owes royalties on sales of EXPAREL 14 made with the ’495 patent under the parties’ agreements. Id. at 16–18. I explained that “[a]s the 15 parties did not choose to define ‘relate to,’ and the degree of relation under any such definition is 16 unclear, summary judgment is not the appropriate stage for me to resolve the parties’ differing 17 views about whether the ’495 patent [and the ’838 patent]1 are related.” Id. at 18. 18 B. RDF’s motion to compel and reopen discovery 19 RDF moves to compel Pacira to produce certain documents that RDF claims Pacira 20 withheld during discovery. ECF No. 183. RDF also requests to reopen discovery to allow it to 21 conduct a deposition regarding those documents. Id. RDF claims to have learned about these 22 documents when its attorneys attended a bench trial in February of 2024 in Pacira’s New Jersey 23 case against third party eVenus Pharmaceutical Laboratories (the “eVenus” case). 2 Id. at 6. 24 25 1 Also at issue for trial is whether the ’495 patent is related to Patent No. 5,807,572. ECF No. 152 at 16–18. 26 However, only the ’838 patent is at issue in RDF’s motion to compel and to reopen discovery. 2 Pacira Pharms., Inc. v. eVenus Pharms. Labs, Inc., Nos. 2:21-cv-19829-MCA-JRA, 2:22-cv-718-MCA-JRA (D.N.J.). 1 The eVenus case is a patent infringement case. ECF No. 193 at 12. In it, Pacira asserts that 2 |}eVenus’ generic version of EXPAREL infringes on the ’495 patent. Id. eVenus’ position in that case 3 |/is that the 495 patent is invalid and unenforceable based on alleged prior art—specifically, the 4 ||45L EXPAREL product. Id. 5 RDF claims that an argument Pacira made in eVenus is similar to one Pacira makes here. 6 || Specifically, that the 200L EXPAREL produced using the ’495 patent technology is more stable 7 ||than, and thus distinct from, the 45L EXPAREL produced using the ’838 patent.? ECF No. 183 at 13-14. RDF claims that in both this case and in eVenus, Pacira relied on data underlying the □□□ 9 || patent to make this argument. Id. 10 But while sitting in on the eVenus bench trial, RDF’s attorneys claimed to learn about 11 documents that purportedly contradict the data underlying the ’495 patent and tend to show that 12 EXPAREL is not more stable than 45L EXPAREL. Id. at 15-16. RDF’s attorneys learned about 13 ||these documents from a PowerPoint slide,+ depicted below, that eVenus’ attorneys used to argue 14 the data underlying the 495 patent on which Pacira relied was just “the tip of the iceberg,” 15 that the complete set of data contradicts the data underlying the 495 patent. Id. 16 Pacira’s 45-L Date

eis

19 20 fp ______ _______¥ POE 21 ag 22 23 24 Pacira argues that comparing the similarities of the two products’ stability is not its trial strategy, but 4 RDF’s. ECF No. 193 at 16. 4 Def.’s Ex. 4, ECF No. 186-4.

1 RDF asserts that it is entitled to all the documents referenced in this slide, insinuating 2 that Pacira must have produced them in eVenus, but failed to produce them in response to certain 3 of RDF’s requests for production to which they would have been responsive in this case. Id. at 17. 4 RDF agues that it is also entitled to whatever source documents form the basis for the “Los5 5 Spreadsheet,” “Ardekani6 Data,” and “All Identified 25 °C Storage Data,” eVenus deposition 6 transcripts related to the differences between the EXPAREL products; eVenus expert reports 7 related to the differences between the EXPAREL products; and transcripts and videos of eVenus 8 trial testimony regarding differences between the EXPAREL products. Id. at 19–20. 9 Pacira responds that RDF is simply trying to re-do discovery now that I have decided the 10 topics on which there are disputed issues of material fact. ECF No. 193. Pacira argues that I should 11 deny the motion to compel and to reopen discovery because Pacira has already produced the data 12 underlying the “Los Spreadsheet,” the “Ardekani Data,” and the “25 °C Storage Data” to RDF in 13 this case, but RDF simply chose not to focus on this data until after summary judgment. ECF No. 14 193 at 6, 9, 17–19. Pacira adds that I should deny the motion to compel because RDF delayed until 15 after discovery closed, after summary judgment, and only a few months before trial to file its 16 motion, despite following the eVenus case closely enough to have known about the documents 17 long before. Id. at 19–20. Even if the motion to compel is timely, Pacira argues that the information 18 RDF seeks to compel is irrelevant because it was produced and created in a different case with a 19 different legal theory. Id. at 15–17, 19–21. Pacira argues that I should also deny the motion to reopen 20 discovery because RDF has not established good cause or excusable neglect given the fact that it 21 already had the data and chose to do nothing with it until after summary judgment. Id. at 21–24. 22 In reply, RDF withdraws its request for documents Pacira already produced, but renews 23 its request for the “Los Spreadsheet,” “Ardekani Data,” and “25 °C Storage Data” as used in the 24 25

26 5 Kathy Los is one of the ’495 patent named inventors. ECF No. 183 at 14. 6 Soroush Ardekani is one of Pacira’s scientists. ECF No. 193 at 9.

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