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Alnylam Pharmaceuticals, Inc. v. Dicerna Pharmaceuticals, Inc.

Superior Court of Massachusetts, Middlesex

April 6, 2016

Alnylam Pharmaceuticals, Inc.
v.
Dicerna Pharmaceuticals, Inc. No. 134242

          ORDERS ON DISCOVERY MOTIONS

          Edward P. Leibensperger, Justice

         This is an alleged misappropriation of trade secrets case. The parties are biotechnology companies located in Cambridge, Massachusetts. Both companies are involved in the research, development and commercialization of therapeutics utilizing RNA interference (" RNAi"). Short interfering RNA (" siRNA") can be used to " silence" disease-causing genes using the RNAi mechanism. The parties' factual contentions involve highly complex issues concerning molecular biology and nucleic acid chemistry.

         Both Alnylam and Dicerna bid to purchase the assets, including the intellectual property, of Sirna Therapeutics, Inc., a RNAi-focused subsidiary of Merck & Co., Inc. Both companies signed Confidential Disclosure Agreements (" CDAs") with Merck promising, among other things, to return, destroy and not use confidential information regarding Sirna if the company's bid proved unsuccessful. Alnylam was the successful bidder. It completed the purchase of Sirna in March 2014, in exchange for an immediate payment of cash and stock worth approximately $175 million. Alnylam received from Merck in connection with the closing the assignment of Merck's fights under the CDA with Dicerna.

         In anticipation of its decision to sell Sirna, Merck terminated the employment of dozens of scientists working on RNAi. The scientists were obligated by contract not to disclose after the termination of their employment confidential information or trade secrets of Sirna or Merck. Six of the former Merck scientists became employed by Dicerna by May 2014.

         Alnylam alleges that some or all of the former Merck scientists have disclosed Sirna/Merck confidential information or trade secrets, now belonging to Alnylam, to Dicerna and that Dicerna has used the information to advance its RNAi research and development. Alnylam also alleges that Dicerna has breached the terms of the CDA it entered into with Merck. Dicerna denies the allegations.

         Since the commencement of the action the parties (a) negotiated a Stipulated Protective Order governing the exchange of confidential information in discovery, (b) propounded requests for documents and interrogatories, and (c) produced certain documents but objected to producing all requested documents. Disputes have arisen regarding the proper scope and timing of discovery. The following motions are before the court: (1) Dicerna's Motion to Compel Adequate Trade Secret Disclosure; (2) Dicerna's Motion for Protective Order to prevent disclosure of Dicerna's internal research and development information and Alnylam's Cross Motion to Compel Production of Dicerna's Scientific Development Information; (3) Alnylam's Motion for Protective Order to prevent the deposition of its employee, Dr. Laura Sepp-Lorenzino, and Dicerna's Cross Motion to Compel the deposition of Dr. Sepp-Lorenzino; and (4) Alnylam's Motion for Protective Order to bar disclosure of confidential information to an expert selected by Dicerna, Dr. Nassim Usman.

         1. Alnylam's Trade Secret Disclosure

         The genesis of the discovery disputes involves the adequacy of the disclosure by Alnylam of what it claims are the trade secrets taken and used by Dicerna. Alnylam concedes that in a theft of trade secrets case it is incumbent upon the plaintiff to identify the allegedly stolen trade secrets with reasonable particularity. " 'Reasonable particularity' for these purposes simply means a description of the trade secrets at issue that is sufficient to put a defendant on notice of the nature of plaintiff's claims and to enable the defendant to determine the relevancy of any requested discovery." Alnylam's Opposition to Defendant's Motion for Protective Order and Memorandum in Support of its Cross Motion to Compel Production of Dicerna's Scientific Development Information, p. 11. I accept that description of a plaintiff's obligation in a trade secrets case. Such disclosure of the allegedly stolen trade secrets must come before a plaintiff is allowed to obtain discovery of a defendant's confidential information regarding the development of the defendant's own technology so as to prevent a plaintiff, especially a competitor as in this case, from rummaging through a defendant's scientific files. L-3 Comm. Corp. v. Reveal Imaging Technologies, Inc., 18 Mass.L.Rptr. 512, (Mass.Sup.Ct. 2004) (" Massachusetts law and law elsewhere supports such an order [to serve a statement identifying trade secrets that form the basis of a claim of trade secret misappropriation before any discovery may be had on those claims]"). Moreover, the burden of time and expense to respond to discovery propounded by the plaintiff in a trade secrets case should be circumscribed by what the plaintiff fairly and specifically claims are the stolen trade secrets. Microwave Research Corp. v. Sanders Assoc., 110 F.R.D. 669, 672 (D.Mass. 1986).

         Alnylam has provided to Dicerna as an attachment to an answer to an interrogatory asking Alnylam to identify the confidential information and trade secrets allegedly misappropriated a 21-page document entitled " Alnylam's Disclosure of Trade Secret Information" (" Trade Secret Disclosure"). The document is organized into 31 numbered paragraphs, most of which have several subparagraphs. Review of the Trade Secret Disclosure by me is hampered because the Disclosure consists of highly technical scientific information in arcane terms beyond my ken and understanding. That said, I am struck, on the one hand, by the breadth of some of the categorical descriptions used by Alnylam to describe its allegedly stolen trade secrets and, on the other hand, the failure of Alnylam to be specific about what it claims are really the trade secrets. On perusal, Alnylam appears to contend that the entire field of RNAi belongs to it, alone.

         The only scientific assistance provided to the court for evaluating the Trade Secret Disclosure is the Affidavit of David R. Liu, a Ph.D. in organic chemistry and a professor of chemistry and chemical biology at Harvard University. Dr. Liu is engaged as an expert consultant by Dicerna. Dr. Liu states that it is not possible to evaluate Alnylam's claims because " much of the information" in the Trade Secret Disclosure lacks specificity and covers a very broad expanse of general topics in many fields as to which there is a great deal of public information. Dr. Liu points out that the disclosure is not specific enough to understand the nature of Alnylam's claims and to advise Dicerna with respect to the relevancy of discovery sought by Alnylam. With respect to Alnylam's request to Dicerna to state why the items on the Trade Secret Disclosure do not constitute Alnylam's trade secrets, Dr. Liu opines that " it would be impossible to provide a detailed response without greater specificity and, given the broad scope of the topics included on the List, the effort required to do so would consume thousands of hours at enormous expert expense." Liu Aff. ¶ 9. Alnylam provides no affidavit or other statement of a scientist to contradict Dr. Liu. The Trade Secret Disclosure is unsigned. It is merely attached to Alnylam's answers to interrogatories which, in turn, are signed by counsel. Given this state of the record, I am compelled to conclude, based on the scientific analysis of Dr. Liu, that Alnylam's Trade Secret Disclosure fails specifically to identify its trade secrets and is, thus, inadequate.

         That said, the question becomes how best to move this case forward. First, Alnylam is ordered to prepare and serve a revised Trade Secret Disclosure. This revised Trade Secret Disclosure shall describe " with clarity that can be understood by a lay person" the claimed trade secrets. Staffbridge, Inc. v. Gary D. Nelson Assoc., Inc., 2004 WL 1429935, *4 (Mass.Sup.Ct. 2004). While this is understandably difficult when describing complex scientific concepts, a much better attempt can be made. This must have already been contemplated by Alnylam as it elected ultimately to submit this case to a jury. Also the revised Trade Secret Disclosure should identify the claims with sufficient particularity so that the reader can understand how each claim differs from information in the public domain. United Services Auto Ass'n v. Mitek Systems, Inc., 289 F.R.D. 244, 249 (W.D.Tex. 2013); See also Dow Chemical Canada Inc. v. HRD Corp., 909 F.Supp.2d 340, 346 (D.Del. 2012) (" The identification must be particular enough as to separate the trade secret from matters of general knowledge in the trade or of special knowledge of persons skilled in the trade"). Alnylam is hereby ORDERED to serve its revised Trade Secret Disclosure by no later than May 6, 2016, after following the procedure described below.

         Second, with respect to the preparation of the revised Trade Secret Disclosure, each side should designate a scientific expert to meet and confer about the revised list. Such a conference is likely to go a long way towards achieving clarity. It should be noted that such a conference is only for the purpose of Dicerna understanding what trade secrets are claimed by Alnylam to have been misapprehended. The conference is not intended to resolve the issue of whether the claimed trade secrets are, in fact, protectable trade secrets.

         Third, I will consider, if the parties are unable to reach agreement regarding the adequacy of Alnylam's revised Trade Secret Disclosure, the appointment by the court of an expert. See Mass. Guide to Evidence . § 706. The cost of the court-appointed expert will be split equally between the parties.

         Dicerna's Motion to Compel Adequate Trade Secret Disclosure is ALLOWED ...


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