Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

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

Superior Court of Massachusetts, Middlesex

October 23, 2017

Alnylam Pharmaceuticals, Inc.
Dicerna Pharmaceuticals, Inc


          Edward P. Leibensperger, J.

         These motions present the issue of whether, in a battle between business competitors, the defendant may assert a counterclaim against the plaintiff based on plaintiff's commencement of the lawsuit. Specifically, may the defendant proceed on counterclaims of tortious interference with advantageous relations, abuse of process and violation of G.L.C. 93A based on the allegation that the initiation of the lawsuit by the plaintiff was motivated by an ulterior purpose to squelch the defendant as a competitor, as opposed to a good faith belief in the claims asserted?

         Here, Alnylam attacks counterclaims asserted by Dicerna. Alnylam seeks dismissal of Dicerna's counterclaims on the ground that they are all based on Alnylam's exercise of its right to petition the government by commencing the lawsuit. Alnylam invokes the protection of the anti-SLAPP staute, G.L.c. 231, § 59H. Alnylam also contends that Dicerna's counterclaims fail to meet the standard for asserting viable causes of action. Thus, Alnylam moves for dismissal under Rule 12(b)(6). I will address the anti-SLAPP motion first as the resolution of that motion will necessarily determine whether the counterclaims survive Rule 12(b)(6).


         This action was commenced by Alnylam in June 2015. Alnylam claims that Dicerna misappropriated Alnylam's trade secrets. In general, the trade secrets include those developed at Merck and purchased by Alnylam for millions of dollars. Alnylam alleges that the theft occurred in at least two ways. First, Dicerna hired scientists who had been employed at Merck, and those scientists brought Merck's trade secret documents with them to Dicerna. Second, Dicerna had bid for Merck's trade secrets at the same time as Alnylam. In that connection, Dicerna was provided with access to Merck's trade secrets under an agreement not to use or disclose the trade secrets if the bid were unsuccessful. Dicerna's bid was unsuccessful, as the sale went to Alnylam. Alnylam claims that Dicerna is, nevertheless, using the Merck/Alnylam trade secrets. Alnylam seeks damages and an injunction in its complaint but it chose not to seek a preliminary injunction. Dicerna did not attack Alnylam's complaint with a motion to dismiss or a motion for summary judgment.

          Two years later, in June 2017, Dicerna moved to amend its responsive pleading to assert counterclaims against Alnylam. After hearing, I allowed the motion to amend. The counterclaims are in three counts: Count I, Tortious Interference With Advantageous Relations; Count II, Abuse of Process; and Count III, Violation of G.L.C. 93A. Alnylam now moves to dismiss the counterclaims.

         The overall gist of the counterclaims is that Alnylam commenced a frivolous suit because the trade secrets alleged by Alnylam, and described by it after several iterations during discovery from 2015 to 2017, are not secrets at all but, instead, constitute information in the public domain. Dicerna contends that the suit was commenced in order to crush Alnylam's much smaller competitor, Dicerna, with the cost of defending the case. Dicerna also avers that Alnylam brought the suit with the ulterior motive to interfere with Dicerna's funding sources and partnership opportunities. The counterclaims include the following specifics.

         There is no question that the two bio-pharmaceutical companies are competitors. They are both engaged in the process of researching, developing and commercializing therapies utilizing RNA interference (" RNAi" ). RNAi technology is cutting edge science directed to attacking or suppressing disease-involved genes. According to Dicerna's counterclaim, the two companies compete with respect to hiring the best scientists and attracting investment dollars, as well as with respect to bringing an approved drug to market. Alnylam is the larger competitor, with over one billion dollars in cash on its balance sheet, while Dicerna has only a small fraction of that amount.

         Dicerna alleges that the trade secrets claimed by Alnylam fail to qualify as such. The " central component" of the assets purchased from Merck by Alnylam was Merck's patent portfolio. Counterclaims (" CCL" ) ¶ 27. The patent portfolio puts the technology in the public domain. In addition, the particular trade secret that precipitated this suit (Slide 11) has been described in the public domain in patent applications and in the scientific literature. Dicerna alleges that Alnylam did not research whether its putative trade secrets were in the public domain prior to filing this lawsuit. CCL ¶ s 42 to 46. In ¶ 45, Dicerna states " Alnylam's willful blindness to the public domain and its own patent strategy while making its trade secret allegation is clear, as not a single Alnylam witness has come forward to testify that Alnylam considered the technology described in its public patent filings before striking out at Dicerna with a lawsuit designed to inflict competitive harm on Dicerna." In depositions taken of Alnylam witnesses in this case, Dicerna says there are admissions that Alnylam did not, before filing suit, compare the Merck documents that were found to be in the possession of former Merck scientists who became employed at Dicerna to information already in the public domain. Finally, Dicerna alleges that Alnylam did not investigate before filing suit whether the putative trade secrets held at Merck were adequately protected as such so as to qualify for legal protection as trade secrets. CCL ¶ s 17 to 24.

         Alnylam filed this lawsuit against Dicerna in June 2015, and on the same day issued a press release announcing the action. With the press release, Alnylam posted an electronic copy of its complaint, where it remains accessible today. Although Alnylam claimed in the press release that it filed the case in order to stop Dicerna from misappropriating trade secret information, and included a request for an injunction in the complaint, Alnylam did not seek a preliminary injunction. At the outset of this litigation, Alnylam, upon motion by Dicerna, was ordered to provide a Trade Secret List detailing the secrets it claimed had been misappropriated and describing whether the putative secrets were or were not in the public domain. In response, Alnylam submitted an extremely long and broad list, with no indication of what might already be in the public domain. Pursuant to orders of the court, Alnylam was required to revise the list in successive iterations of the Trade Secret List. After discovery, the list of alleged trade secrets has narrowed considerably.

         Dicerna alleges that " [b]ecause they are competitors, Alnylam is well-aware that Dicerna relies on securing partnerships, alliances, and licensing deals with other pharmaceutical companies to continue to fund its mission of continuing research and development into potentially life-saving therapeutics." CCL ¶ 57. Dicerna pleads that it has been unable to secure two partnership deals that would have closed but for the pendency of Alnylam's lawsuit. CCL ¶ 68. The lost partnership opportunities have allegedly caused Dicerna pecuniary harm in the form of lost investment dollars. Dicerna also claims that the lawsuit has affected Dicerna's ability to recruit talented scientists. CCL ¶ 72. Finally, Dicerna alleges that Alnylam's lawsuit has caused harm to Dicerna in the form of attorney fees and expert costs.


         The standards for evaluating Alnylam's anti-SLAPP motion and its Rule 12(b)(6) motion are different. To survive a Rule 12(b)(6) motion to dismiss, a complaint or counterclaim must set forth the basis for the complainant's entitlement to relief with " more than labels and conclusions." Iannacchino v. Ford Motor Co., 451 Mass. 623, 636, 888 N.E.2d 879, quoting Bell A. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). At the pleading stage, Rule 12(b)(6) requires that the counterclaim set forth " factual 'allegations plausibly suggesting (not merely consistent with)' an entitlement to relief . . ." Id., quoting Bell A. Corp., 550 U.S. at 557. The court must, however, accept as true the factual allegations of the counterclaim and draw every reasonable inference in favor of the counterclaimant. Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674, 676, 940 N.E.2d 413 (2011). The anti-SLAPP standard allows the court to consider more than the averments in the counterclaim. " [T]he motion judge, in the exercise of sound discretion, is to assess the totality of the circumstances pertinent to the nonmoving party's asserted primary purpose in bringing its claim. The course and manner of proceedings, the pleadings filed, and affidavits 'stating the facts upon which the liability or defense is based,' . . . may all be considered in evaluating whether the claim is a 'SLAPP' suit." Blanchard v. Steward Carney Hospital, Inc., 477 Mass. 141, 160-61, 75 N.E.3d 21 (2017) (citations omitted). Under the anti-SLAPP statute, G.L.C. 231, § 59H, the court is to " advance" consideration of a special motion to dismiss " so that it may be heard and determined as expeditiously as possible."

         Thus, the court is required to conduct the comprehensive analysis described in Blanchard upon motion papers rather than a trial. This presents particular problems in a highly technical case like this one. The essence of Dicerna's counterclaim is the allegation that Alnylam did not have a good faith basis for its claims of theft of trade secrets. Dicerna says the trade secrets do not qualify for protection because they are in the public domain. That is the heart of this lawsuit--were the trade secrets in the public domain or not? At trial, I expect that there will be sophisticated experts on both sides telling the jury the answer to that question. Yet, I am to determine now whether Dicerna should ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.