Depomed, Inc. v. Lupin Pharmaceuticals, Inc. et al
Filing
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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)
wgaede@mwe.com
TERRY W. AHEARN (216543)
tahearn@mwe.com
BRYAN K. JAMES (260753)
bjames@mwe.com
SHANE G. SMITH (272630)
sgsmith@mwe.com
275 Middlefield Road, Suite 100
Menlo Park, CA 94025
Telephone: (650) 815-7400
Facsimile: (650) 815-7401
Attorneys for Depomed, Inc.
RAKOCZY MOLINO MAZZOCHI SIWIK LLP
PAUL J. MOLINO (Pro Hac Vice)
paul@rmmslegal.com
WILLIAM A. RAKOCZY (Pro Hac Vice)
wrakoczy@rmmslegal.com
THEODORE J. CHIACCHO (Pro Hac Vice)
tchiacchio@rmmslegal.com
HEINZ J. SALMEN (Pro Hac Vice)
hsalmen@rmmslegal.com
6 West Hubbard Street, Suite 500
Chicago, Illinois 60654
Telephone: (312) 222-6301
Facsimile: (312) 222-6320
DURIE TANGRI LLP
DARALYN J. DURIE (169825)
ddurie@durietangri.com
SONALI D. MAITRA (254896)
smaitra@durietangri.com
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: (415) 362-6666
Facsimile: (415) 236-6300
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
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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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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
-2-
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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S
3/27/12
UNIT
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milton
Ha
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Judge P
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R NIA
HonorableORDERE J. Hamilton
O Phyllis
IT IS S
Judge of the United States District Court
FO
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
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