1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ALLELE BIOTECHNOLOGY AND Case No.: 20-cv-01958-H-AGS PHARMACEUTICALS, INC., a 12 California corporation, ORDER DENYING DEFENDANTS’ 13 MOTIONS TO COMPEL Plaintiff,

14 v. [Doc. Nos. 75, 76, 77, 78, 81, 82.] 15 PFIZER, INC., a Delaware corporation; 16 BIONTECH SE, a German company; BIONTECH US, INC., a Delaware 17 corporation; and DOES 1-30, 18 Defendants. 19 20 On September 1 and 2, 2021, the parties filed six joint filings for the determination 21 of various discovery disputes. (Doc. Nos. 75, 76, 77, 78, 81, 82.) The Court held a hearing 22 on the matter on September 13, 2021. Ben L. Wagner, Robert Schaffer, and Sushmitha 23 Rajeevan appeared for Plaintiff Allele Biotechnology and Pharmaceuticals, Inc. Charles 24 L. McCloud, Thomas H.L. Selby, Julie L. Tavares, and David J. Noonan appeared for 25 Defendant Pfizer, Inc. Bruce M. Wexler, Elizabeth L. Brann, Merri C. Moken, and Karthik 26 R. Kasaraneni appeared for Defendants BioNTech SE and BioNTech US, Inc. The Court 27 addresses each of these discovery disputes in turn below. 28 /// 1 In the first discovery dispute, Defendants request that Plaintiff be compelled to 2 supplement its response to Defendants’ Interrogatory No. 14 to describe how the 3 documents currently cited in its response show Plaintiff’s compliance with the marking 4 statute,

. (Doc. No. 75 at 2.) Defendants have failed to show that 5 supplementation is required at this time. As such, the Court denies Defendants’ first 6 motion to compel. 7 In the second discovery dispute, Defendants request that Plaintiff be compelled to 8 respond to Defendants’ Document Requests Nos. 17, 20-26, 37, 70-76, 83, 89, 96-97, 99, 9 138, 140-41, 145-46 and Defendants’ Interrogatories Nos. 2, 3, and 8 seeking Plaintiff’s 10 information about alternative fluorescent proteins. (Doc. No. 76 at 2.) The Court agrees 11 with Plaintiff that Defendants’ requests are overbroad. As such, the Court denies 12 Defendants’ second motion to compel. The Court notes that in the filing, Plaintiff states 13 that it has offered to provide licenses for the last three years and documents sufficient to 14 show how its other fluorescent proteins work. (Doc. No. 76 at 2.) The Court orders the 15 parties to meet and confer on the production of relevant licenses and documents. 16 In the third discovery dispute, Defendants request that Plaintiff be compelled to 17 produce copies of the pleadings, claim construction materials, expert reports, and 18 deposition transcripts from a different case involving the patent-in-suit, the ’221 patent: 19 Allele Biotechnology and Pharmaceuticals, Inc. v. Regeneron Pharmaceuticals, Inc., No. 20 7:20-cv-8255 (S.D.N.Y.). (Doc. No. 77 at 2.) The fact that Plaintiff produced certain 21 documents in a different case “does not necessarily make them discoverable in this case.” 22 Chen v. Ampco Sys. Parking, No. 08-CV-0422-BEN (JMA),

, at *3 23 (S.D. Cal. Aug. 14, 2009). As such, the Court denies Defendants’ third motion to compel. 24 In the fourth discovery dispute, Defendants request that Plaintiff be compelled to 25 respond to Defendants’ Document Requests Nos. 10-14 and Defendants’ Interrogatories 26 Nos. 6 and 7 seeking information related to Plaintiff’s contention that the ’221 patent is 27 valid. (Doc. No. 78 at 2.) The Court agrees with Plaintiff that Defendants’ requests are 28 1 || premature at this stage in the proceedings. As such, the Court denies Defendants’ fourth 2 motion to compel without prejudice. 3 In the fifth discovery dispute, Defendants request that Plaintiff be compelled to 4 ||respond to Defendants’ Document Requests Nos. 59, 61, and 111 and produce documents 5 || identifying the source and terms of any litigation funding Plaintiff may be receiving in this 6 ||matter and related communications. (Doc. No. 81 at 2.) Defendants are not entitled to 7 these documents. See MLC Intell. Prop., LLC v. Micron Tech., Inc., No. 14-CV-03657- 8 || SI,

, at *2 (N.D. Cal. Jan. 7, 2019). As such, the Court denies Defendants’ 9 || fifth motion to compel. 10 In the sixth discovery dispute, Defendants request that Plaintiff be compelled to 11 |/respond to Defendants’ Document Requests Nos. 6, 47, and 48 and produce nonprivileged 12 ||documents from Plaintiffs internal prosecution files for the ’221 patent and a pending 13 |}continuation application that has the same written description of the alleged invention. 14 ||}(Doc. No. 82 at 2.) “[P]atent prosecution files often are protected by attorney-client 15 || privilege.” Orthopaedic Hosp. v. DJO Glob., Inc., No. 319CV00970JLSAHG,

|} 7625123, at *3 (S.D. Cal. Dec. 22, 2020); see In re Spalding Sports Worldwide, Inc., 203 17 || F.3d 800, 805-06 (Fed. Cir. 2000). As such, the Court denies Defendants’ sixth motion to 18 || compel. 19 IT IS SO ORDERED. 20 || DATED: September 13, 2021 | | ual | | | 7! MARILYN HUFF, Distri ge 22 UNITED STATES DISTRICT COURT 23 24 25 26 27 28