Par Pharmaceutical, Inc. et al v. Takeda Pharmaceutical Co., Ltd. et al

Filing 56

ORDER by Judge Lucy H. Koh granting 47 Motion to Relate Case. Cases 13-cv-04001 and 13-cv-04002 are related to this case and other previously related cases. (mpb, COURT STAFF) (Filed on 10/28/2013)

1
2
3
4
5
6
7
8
UNITED STATES DISTRICT COURT

9

NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

10

SAN JOSE DIVISION

11
12
13
14
15
16
17
18
19

PAR PHARMACEUTICAL, INC., and HANDA )
PHARMACEUTICALS, LLC,
)
)
Plaintiffs-Counterdefendants, )
)
v.
)
)
TAKEDA PHARMACEUTICAL CO., LTD.,
)
TAKEDA PHARMACEUTICALS NORTH
)
AMERICA, INC., TAKDEA
)
PHARMACEUTCALS AMERICA, INC., and )
TAKEDA PHARMACEUTICALS U.S.A. INC., )
)
Defendants-Counterclaimants. )
)

Case No.:

13-CV-01927-LHK

Related to:

13-CV-02416-LHK
13-CV-02418-LHK
13-CV-02420-LHK

ORDER RELATING CASES PURSUANT
TO CIVIL LOCAL RULE 3-12

The three Motions to Relate addressed by this Order concern the latest of numerous actions
20
brought by or against Takeda Pharmaceutical Company, Limited, Takeda Pharmaceuticals U.S.A.,
21
Inc., and Takeda Pharmaceuticals America, Inc. (collectively, “Takeda”) related to patents
22
underlying Takeda’s acid reflux drug, Dexilant. See Case No. 13-CV-01927-LHK, ECF Nos. 47
23
(First Motion to Relate), 50 (Limited Opposition to First Motion to Relate); Case No. 13-CV24
04001-EMC, ECF Nos. 18 (Second Motion to Relate), 48, Ex. A (Response to Second Motion to
25
Relate); Case No. 13-CV-4002-EJD, ECF No. 17, Ex. A (Third Motion to Relate). All of these
26
actions concern the submission of Abbreviated New Drug Applications (“ANDA”) to the U.S.
27
Food and Drug Administration by pharmaceutical manufacturers seeking to produce generic
28
1
Case No.: 13-CV-01927-LHK
ORDER RELATING CASES

1

versions of Dexilant. For the foregoing reasons, the Court GRANTS the First and Second Motions

2

to Relate and DENIES as moot the Third Motion to Relate.

3

I.

BACKGROUND

4

On August 28, 2013, Takeda filed two separate actions against Mylan Inc. and Mylan

5

Pharmaceuticals Inc. (collectively, “Mylan”). The first of the August 28, 2013 actions filed by

6

Takada alleges that Mylan infringed on two of the Takada patents associated with Dexilant:

7

8,173,158 and 8,461,187. See Takeda Pharm. Co. v. Mylan Inc., Case No. 13-CV-04001-EMC

8

(“Mylan 4001”), ECF No. 1. The second August 28, 2013 action filed by Takada alleges that

9

Mylan infringed on five other patents associated with Dexilant: 6,462,058; 6,664,276; 6,939,971;

United States District Court
For the Northern District of California

10

7,285,668; and 7,790,755. See Takeda Pharm. Co. v. Mylan Inc., Case No. 13-CV-04002-EJD

11

(“Mylan 4002”), ECF No. 1.

12

Prior to filing Mylan 4001 and Mylan 4002, Takeda was already party to eight actions

13

regarding the Dexilant patents, including seven filed by Takeda alleging infringement by generic

14

manufacturers and one action which was filed by a generic manufacturer against Takeda, see Case

15

No. 13-CV-01927-LHK. These eight cases are assigned as follows:

16



The ‘755 Actions. These four actions before Magistrate Judge Spero concern Dexilant

17

patents 6,462,058; 6,664,276; 6,939,971; 7,285,668; 7,790,755; and 7,737,282. See Takeda

18

Pharm. Co. v. Handa Pharms. LLC, Case No. 11-CV-00840-JCS, filed Feb. 23, 2011;

19

Takeda Pharm. Co. v. TWi Pharms., Inc., Case No. 11-CV-01609-JCS, filed Apr. 1, 2011;

20

Takeda Pharm. Co. v. Impax Labs., Inc., Case No. 11-CV-01610-JCS, filed Apr. 1, 2011;

21

Takeda Pharm. Co. v. Sandoz Inc., Case No. 12-CV-00446-JCS, filed Jan. 27, 2012.

22



The ‘158 Actions. These four actions before the undersigned Judge concern Dexilant

23

patents 8,173,158 and 8,461,187. See Par Pharm., Inc. v. Takeda Pharm. Co., Case No. 13-

24

CV-01927-LHK, filed Apr. 26, 2013; Takeda Pharm. Co. v. TWi Pharms., Inc., Case No.

25

13-CV-02420-LHK, filed May 29, 2013; Takeda Pharm. Co. v. Impax Labs., Inc., Case No.

26

13-CV-02416-LHK, filed May 29, 2013; Takeda Pharm. Co. v. Sandoz Inc., Case No. 13-

27

CV-02418-LHK, filed May 29, 2013 and settled Oct. 22, 2013.

28
2
Case No.: 13-CV-01927-LHK
ORDER RELATING CASES

1

Although this Court previously suggested that “Judge Spero should preside over all of the

2

[‘158 Actions and ‘755 A]ctions,” see July 9, 2013 Order Relating Cases, Case No. 13-CV-01927-

3

LHK, ECF No. 29 at 3, Judge Spero could not preside over all cases because Takeda did not

4

consent to having the ‘158 Actions heard by a Magistrate Judge. Case No. 13-CV-01927-LHK,

5

ECF No. 8; Case No. 13-CV-02420-LHK, ECF No. 12; Case No. 13-CV-02416-LHK, ECF No.

6

11; Case No. 13-CV-02418-LHK, ECF No. 13. Thus, the ‘158 Actions were necessarily separated

7

from the ‘775 Actions, despite this Court’s position that all eight actions should appropriately be

8

related to one another. See Case No. 13-CV-01927-LHK, ECF Nos. 29, 41.

9

II.

United States District Court
For the Northern District of California

10

THE INSTANT MOTIONS TO RELATE
Before the Court now are three Motions to Relate concerning Mylan 4001 and Mylan 4002.

11

First, Takeda seeks to relate Mylan 4001 to the ‘158 Actions pending before this Court because

12

“[t]he patents at issue in the Mylan 4001 action [8,173,158 and 8,461,187] are also at issue in the

13

[‘158 Actions].” Case No. 13-CV-01927-LHK, ECF No. 47 at 1 (First Motion to Relate). Second,

14

Mylan seeks to relate Mylan 4001 and Mylan 4002 because “the two cases involve the same parties

15

and subject matter” and “any possible settlement of the Mylan Dexilant Actions would need to be

16

global.” Mylan 4001, ECF No. 18 at 2, 4 (Second Motion to Relate). Mylan does not oppose Takeda’s

17

request to relate Mylan 4001 to the ‘158 Actions, if, and only if, Mylan 4002 is also related to Mylan

18

4001 and the ‘158 Actions. Case No. 13-CV-01927-LHK, ECF No. 50 at 3-4. In other words, Mylan

19

supports the First Motion to Relate if the Second Motion to Relate is granted and opposes the First

20

Motion to Relate if the Second Motion to Relate is denied. In all cases, Takeda opposes Mylan’s

21

motion to relate Mylan 4001 and Mylan 4002 (the Second Motion to Relate) on the basis that “the

22

patents at issue in [Mylan 4001]... have different specifications from, and are not based on applications

23

related to, those leading to the patents in the Mylan 4002 action.” Case No. 13-CV-01927-LHK, ECF

24

No. 48, Ex. A at 4.

25

In the third Motion to Relate, Takeda seeks to relate Mylan 4002 to the ‘755 Actions

26

pending before Magistrate Judge Spero because those cases share the same patents at issue. See

27

Mylan 4002, ECF No. 17 (Third Motion to Relate). However, because Mylan has declined to proceed

28
3
Case No.: 13-CV-01927-LHK
ORDER RELATING CASES

1

before a Magistrate Judge in Mylan 4002, see Mylan 4002, ECF No. 14, this Motion is moot, as Takeda

2

concedes. See Case No. 13-CV-01927-LHK, ECF No. 48, Ex. A at 2.

3

Other than Takeda’s opposition described above, the parties to the ‘158 Actions and ‘755

4

Actions raise no substantive opposition to any of the three Motions to Relate Mylan 4001 or Mylan

5

4002 to one another or to the ‘158 Actions or ‘755 Actions.

6

III.

7

DISCUSSION
According to Civil Local Rule 3-12(a), “[a]n action is related to another when: (1) The

8

actions concern substantially the same parties, property, transaction or event; and (2) It appears

9

likely that there will be an unduly burdensome duplication of labor and expense or conflicting

United States District Court
For the Northern District of California

10
11

results if the cases are conducted before different Judges.”
Here, the Court GRANTS Takeda’s Motion to Relate Mylan 4001 to the ‘158 Actions for

12

the same reasons the Court articulated in its July 9, 2013 Order granting Takeda’s similar motion to

13

relate Case No. 13-CV-01927-LHK to the remaining ‘158 Actions. See Case No. 13-CV-01927-

14

LHK, ECF No. 29. Specifically, the Court finds that the first prong of Civil Local Rule 3-12(a) is

15

satisfied because Mylan 4001 and the ‘158 Actions all concern identical patents, 8,173,158 and

16

8,461,187; share Takeda as a party; and regard the same “transaction or event,” an ANDA

17

application to produce a generic version of Dexilant. See Case No. 13-CV-01927-LHK, ECF No.

18

48, Ex. A. Thus, it “appears likely that there will be an unduly burdensome duplication of labor and

19

expense or conflicting results if the cases are conducted before different Judges.” Civ. L.R. 3-

20

12(a)(2). In making this finding, the Court notes Mylan’s concession that “[i]f Mylan’s motion [to

21

relate Mylan 4001 and Mylan 4002] is approved, Mylan does not oppose the relation of the Mylan

22

Dexilant Actions to the [‘158 Actions],” because “[t]his two-part relation will better serve the goals

23

of Civil Local Rule 3-12 and will conserve judicial resources.” Case No. 13-CV-01927-LHK, ECF

24

No. 50 at 3 (Limited Opposition to First Motion to Relate).

25

The Court recognizes that it would be preferable to relate Mylan 4002 to the ‘755 Actions in

26

order to preserve the distinction that has emerged between the patents under consideration in the

27

‘755 Actions versus in the ‘158 Actions. However, as not all parties consent to a Magistrate Judge,

28

this is not an option. See Mylan 4002, ECF No. 14. Thus, the Court finds that relating Mylan 4002 to
4
Case No.: 13-CV-01927-LHK
ORDER RELATING CASES

1

Mylan 4001 and the ‘158 Actions is the best possible result to avoid “unduly burdensome

2

duplication of labor and expense or conflicting results if the cases are conducted before different

3

Judges.” Civ. L.R. 3-12(a)(2).

4

The Court thus GRANTS Mylan’s Motion to Relate Mylan 4002 to Mylan 4001, and

5

accordingly relates Mylan 4002 to the ‘158 Actions. All of the ‘158 Actions concern the same

6

parties, i.e. Takeda and in some cases, Mylan. All regard ANDA applications to produce generic

7

Dexilant. The Court recognizes that Mylan 4002 differs from the other ‘158 Actions in that it

8

concerns the patents at issue in the ‘755 Actions and not the patents at issue in the ‘158 Actions.

9

Compare Mylan 4001, ECF No. 1, with Mylan 4002, ECF No. 1. Indeed, Takeda opposes relation

United States District Court
For the Northern District of California

10

of Mylan 4001 and 4002 on the basis that the claim construction for the patents at issue in each

11

case will not overlap. See Case No. 13-CV-01927-LHK, ECF No. 48, Ex. A at 3. However, the

12

Court does not find Takeda’s argument compelling. First, all of the patents at issue in Mylan 4001

13

and 4002 are owned by Takeda and underlie the same drug, Dexilant. Second, as discussed above,

14

the Court already found in its July 9, 2013 Order that actions regarding all of these patents may be

15

properly related. See Case No. 13-CV-01927-LHK, ECF No. 29 at 3 (“Judge Spero should preside

16

over all of the [‘158 Actions and ‘755 A]ctions”). The division of the ‘158 Actions from the ‘755

17

Actions was simply due to Takeda’s refusal to consent to a Magistrate Judge in the ‘158 Actions;

18

this division was not made based on an intentional distinction between the patents at issue in the

19

two clusters of cases. Id.

20

Finally, the Court DENIES as moot Takeda’s Motion to Relate Mylan 4002 to the ‘755

21

Actions on the basis that not all parties to Mylan 4002 consented to proceed before a Magistrate

22

Judge.

23
24
25

IT IS SO ORDERED.

26

Dated: October 23, 2013

27

_________________________________
LUCY H. KOH
United States District Judge

28
5
Case No.: 13-CV-01927-LHK
ORDER RELATING CASES