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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

GILEAD SCIENCES, INC., GILEAD


PHARMASSET LLC, and GILEAD
SCIENCES LIMITED,
Plaintiffs, Defendants
Counterclaim Plaintiffs, and
Counterclaim Defendants.
v.
ABBVIE, INC.,
Defendant, Plaintiff,
Counterclaim Defendant, and
Counterclaim Plaintiff.
and ABBVIE IRELAND UNLIMITED
COMPANY,
Counterclaim Plaintiff.

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Civil Action No. 13-2034 (GMS)


(Consolidated with C.A. Nos.
14-209, 14-379)

ORDER
WHEREAS, in the above-captioned action, Abb Vie Inc. and Abb Vie Ireland Unlimited
Company (collectively "AbbVie") assert that Gilead Sciences, Inc., Gilead Pharmasset LLC and
Gilead Sciences Ireland Unlimited Company (collectively "Gilead") induces the infringement of
claims 13-16 of U.S. Patent No. 8,466,159 ("'159 patent"); claims 13-16 of U.S. Patent No.
8,492,386 ("'386 patent"); claims 6-12, 17-20 of U.S. Patent No. 8,685,984 ("'984 patent"); claims
12 and 17-20 of U.S. Patent No. 8,680,106("'106 patent"); and claims 1, 3, and 4 of U.S. Patent
No. 8,809,265 ("'265 patent") (collectively the "asserted claims"). (See D.I. 103);
WHEREAS, on December 18, 2013, Gilead filed its Complaint seeking declaratory
judgments of invalidity and enforceability of claims 13-16 of the' 159 patent and the '386 patent

and alleging that AbbVie was engaged in a fraudulent scheme. (D.I. 2). On March 14, 2014,
Gilead filed its first Amended Complaint (D.I. 25), on April 8, 2014 Gilead filed its second
Amended Complaint (D.I. 31), and on May 8, 2015, Gilead filed its Third Amended and First
Supplemental Complaint. (D.I. 99);
WHEREAS, on May 27, 2015, AbbVie filed its Answer and Counterclaim. (D.I. 103) 1;
WHEREAS, on May 17, 2016, Gilead filed a Motion for Leave to File a Fourth Amended
Complaint. (D.I. 279.) Gilead, in support of its motion, asserts that it should be granted leave to
amend because: (1) under Third Circuit law and the Federal Rule of Civil Procedure 15(a), leave
to amend should be freely granted; (2) Gilead's proposed amendment would cause no prejudice to
AbbVie; (3) Gilead has not unreasonably delayed in seeking leave to amend or proposed this
amendment in bad faith; and (4) "Gilead's amendment is not futile because Gilead's inequitable
conduct allegations as previously pied are not futile-and the amendment only adds additional
factual detail to those well-pied allegations." (D.I. 280 at 3);
WHEREAS, on June 6, 2016, Abb Vie filed an Answering Brief in opposition to Gilead's
motion, (D.I. 290), asserting that Gilead should not be granted leave to amend because: (1) it would
untimely introduce new theories of inequitable conduct2; (2) Gilead's new theories are futile; and
(3) it would unfairly prejudice AbbVie. (Id. at 2-3);

On February 18, 2014, AbbVie filed a separate lawsuit alleging infringement of claims 13-16 of the '159
and '386 patents. (C.A. No.14-209.) On March 25, 2014, AbbVie filed a second lawsuit alleging infringement of the
'106 patent. (C.A. No. 14-379.) On April 10, 2014, AbbVie filed a Supplemental Complaint in the 14-379 action
alleging infringement of the '984 patent. On May I, 2014, Gilead filed its Answer and Counterclaims against AbbVie
and a Third Party Complaint. On June 5, 2014, the parties filed a joint stipulation to consolidate the actions. (C.A.
No. 13-2034, D.I. 43, 44.)
2
The deadline for the amendment of pleadings was May 8, 2015. (D.1. 72.) In addition, Gilead's motion
comes after the parties completed fact discovery on October 15, 2015, after the parties completed expert discovery on
February 25, 2016, and submitted letter briefing requesting leave to move for summary judgment on March 4, 2016.
(Id.) A ten-day jury trial is scheduled to begin on September 12, 2016. (Id.)
2

WHEREAS, the court, having considered the pending motion, the opening brief and
response thereto, and the applicable law, concludes that the amendment that Gilead proposes to
include in this action is unnecessary to promote the interests of justice3 ;
IT IS HEREBY ORDERED that Gilead's Motion (D.1. 279) is DENIED.

July

?-<, 2016

3
Federal Rule of Civil Procedure 15(a) contemplates that leave to amend "should freely be given whenjustice
so requires." See FED. R. Crv. P. 15(a). As noted in its opening brief, Gilead seeks to introduce facts which relate to
the same two theories of inequitable conduct already in the case. (D.I. 280 at 3.) Gilead readily admits that its
amendment would be merely an elaboration, (id. at 4), and that it makes this motion out of an abundance of caution.
(Id. at 2.) In light of these considerations, the court finds the amendment unnecessary to promote the interest of justice.
Gilead need not amend its complaint to specify every detail learned during discovery. As a result, the court will deny
Gilead's motion to amend.