Depomed, Inc. v. Lupin Pharmaceuticals, Inc. et al

Filing 152

CONSENT INJUNCTION AND DISMISSAL ORDER re 151 STIPULATION WITH PROPOSED ORDER [Consent Injunction and Dismissal Order] filed by Depomed, Inc., ***Civil Case Terminated. Signed by Judge Phyllis J. Hamilton on 3/27/12. (nah, COURT STAFF) (Filed on 3/27/2012)

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MCDERMOTT WILL & EMERY LLP
WILLIAM G. GAEDE, III (136184)
[e-mail]
TERRY W. AHEARN (216543)
[e-mail]
BRYAN K. JAMES (260753)
[e-mail]
SHANE G. SMITH (272630)
[e-mail]
275 Middlefield Road, Suite 100
Menlo Park, CA 94025
Telephone: [phone]
Facsimile: [phone]
Attorneys for Depomed, Inc.
RAKOCZY MOLINO MAZZOCHI SIWIK LLP
PAUL J. MOLINO (Pro Hac Vice)
[e-mail]
WILLIAM A. RAKOCZY (Pro Hac Vice)
[e-mail]
THEODORE J. CHIACCHO (Pro Hac Vice)
[e-mail]
HEINZ J. SALMEN (Pro Hac Vice)
[e-mail]
6 West Hubbard Street, Suite 500
Chicago, Illinois 60654
Telephone: [phone]
Facsimile: [phone]
DURIE TANGRI LLP
DARALYN J. DURIE (169825)
[e-mail]
SONALI D. MAITRA (254896)
[e-mail]
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Lupin Pharmaceuticals, Inc.
and Lupin Limited

IN THE UNITED STATES DISTRICT COURT
IN AND FOR THE NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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DEPOMED, INC., a California corporation,
Plaintiff and Counterdefendant,

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Case No. 09-CV-05587-PJH
CONSENT INJUNCTION AND
DISMISSAL ORDER

v.
LUPIN PHARMACEUTICALS, INC., a
Virginia corporation, and LUPIN LIMITED, an
Indian corporation,
Defendants and Counterclaimants.
DM_US 32473302-1.082221.0015

Honorable Phyllis J. Hamilton

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This action for alleged patent infringement (the “Litigation”) has been brought by Plaintiff

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Depomed, Inc. (“Depomed”) against Defendants Lupin Pharmaceuticals, Inc. and Lupin Limited

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(collectively, “Lupin”) for alleged infringement of United States Patent Nos. 6,635,280,

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6,340,475, and 6,488,962 (collectively the “Depomed Patents”). Depomed’s commencement of

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the Litigation was based on its receipt of notice from Lupin Limited that Lupin Limited had filed

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Abbreviated New Drug Application (“ANDA”) No. 91-664 with the United States Food and Drug

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Administration containing a certification pursuant to 21 U.S.C. § 355(j)(2)(A)(vii)(IV) directed to

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the Depomed Patents and seeking approval to market 500 mg and 1000 mg metformin tablets as a

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generic version of Glumetza®.

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Depomed and Lupin have agreed to enter into a good faith final settlement agreement (the

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“Settlement and License Agreement”) regarding this Litigation on the expectation and belief that

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this would eliminate the substantial litigation costs that would otherwise be incurred by both

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Depomed and Lupin during the Litigation, while also serving the public interest by saving judicial

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resources and avoiding the risks to each of the parties associated with infringement.

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Settlement and License Agreement will afford Depomed and Lupin the procompetitive

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opportunity to more productively use money and other resources that would have been spent in

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the continued prosecution and defense of this Litigation, to the benefit of the parties and

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consumers alike, such as by investing more money in pharmaceutical research and development.

The

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Each of Depomed and Lupin acknowledge there is significant risk to each of them

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associated with the continued prosecution of this Litigation and have consented to entry of this

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order through a final settlement as reflected herein. The Court, upon the consent and request of

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Depomed and Lupin, hereby issues the following Order.

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Depomed and Lupin now consent to this Consent Injunction and Dismissal Order and
IT IS HEREBY ORDERED that:

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1.

Subject matter jurisdiction, personal jurisdiction, and venue are all proper in this

2.

In this Litigation, Depomed has charged Lupin with infringement of the Depomed

Court.

Patents in connection with Lupin Limited’s submission of ANDA No. 91-664 directed to generic
DM_US 32473302-1.082221.0015

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CONSENT INJUNCTION AND DISMISSAL ORDER
CASE NO. 09-CV-5587 PJH

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tablets containing 500 mg or 1000 mg of metformin per tablet to the U.S. Food and Drug

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Administration (“FDA”).

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3.

In response to Depomed’s charges of patent infringement, Lupin has alleged

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certain defenses and counterclaims, including that the Depomed Patents are invalid or not

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infringed. The Court has not adjudicated Depomed’s charges of patent infringement or Lupin’s

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defenses and counterclaims.

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4.

Lupin has agreed that each of the defenses and counterclaims set forth in its

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Answer, Affirmative Defenses and Counterclaims, including the allegations and averments

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contained therein, should be dismissed, without prejudice.

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5.

Lupin, their officers, agents, servants, employees and attorneys, and those persons

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in active concert or participation with them who receive actual notice of this Order by personal

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service or otherwise, are hereby enjoined from manufacturing, using, offering to sell or selling

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within the United States and its territories and possessions, including the Commonwealth of

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Puerto Rico (the “Territory”), or importing into the Territory, any generic tablet product

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containing 500 mg or 1000 mg of metformin per tablet that is the subject of ANDA No. 91-664

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until:

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(a)

February 1, 2016; or

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(b)

At such earlier date as may be permitted by the Settlement and License
Agreement that the Parties have entered into.

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6.

Depomed and Lupin each expressly waives any right to appeal or otherwise move

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for relief from this Consent Injunction and Dismissal Order.
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7.

All claims and defenses as between Depomed and Lupin are hereby dismissed

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without prejudice.
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8.

This Court retains jurisdiction over Depomed and Lupin for purposes of enforcing

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this Consent Injunction and Dismissal Order.
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9.

The Clerk of the Court is directed to enter this Consent Injunction and Dismissal

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Order forthwith.
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DM_US 32473302-1.082221.0015

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CONSENT INJUNCTION AND DISMISSAL ORDER
CASE NO. 09-CV-5587 PJH

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IT IS SO STIPULATED.

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McDERMOTT WILL & EMERY LLP

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By:

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/s/ William G. Gaede, III
William G. Gaede, III

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Attorneys for Depomed, Inc.

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RAKOCZY MOLINO MAZZOCHI SIWIK LLP

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By:

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/s/ Paul J. Molino
Paul J. Molino

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Attorneys for Lupin Pharmaceuticals, Inc.
and Lupin Limited

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SIGNATURE ATTESTATION

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Pursuant to General Order 45.X(B), I hereby attest that concurrence has been obtained
from Paul J. Molino indicated by a “conformed” signature (/s/) within this e-filed document.

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/s/ William G. Gaede, III
William G. Gaede, III

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IT IS SO ORDERED.

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3/27/12

UNIT
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Judge P

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HonorableORDERE J. Hamilton
O Phyllis
IT IS S
Judge of the United States District Court
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DATED:

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DM_US 32473302-1.082221.0015

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CONSENT INJUNCTION AND DISMISSAL ORDER
CASE NO. 09-CV-5587 PJH