CIMA Labs Inc. et al v. Novel Laboratories Inc.
MEMORANDUM ORDER re (72 in 1:10-cv-00625-LPS) MOTION to Lift Stay filed by Mylan Pharmaceuticals Inc. is GRANTED; Civil Action Nos. 10-625 and 08-866 will be consolidated; a proposed scheduling order is due 3/31/14. Signed by Judge Leonard P. Stark on 3/21/14. Associated Cases: 1:10-cv-00625-LPS, 1:08-cv-00886-LPS (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CIMA LABS INC., AZUR PHARMA
LIMITED, and AZUR PHARMA
INTERNATIONAL III LIMITED
C.A. No. 10-625-LPS
MYLAN PHARMACEUTICALS, INC.,
At Wilmington this 21st day of March, 2014, having considered the motion filed by
Defendant Mylan Pharmaceuticals Inc. ("Mylan") to lift the stay of this litigation (D.I. 72), and
the opposition filed by Plaintiffs CIMA Labs Inc. ("CIMA"), Azur Pharma Limited, and Azur
Pharma International III Limited (collectively, "Plaintiffs") (D.1. 75);
IT IS HEREBY ORDERED that Defendant's motion to lift the stay (D.I. 72) is
GRANTED for the following reasons:
Background. The history of this action up to the time the litigation was stayed is
recited in the Memorandum Order of April 18, 2011, granting a stay. (D.I. 53) After that date,
two related actions filed by Plaintiff against Barr Laboratories ("Barr") have been dismissed by
stipulation of the parties. (C.A. No. 08-531-LPS D.I. 70; C.A. No. 09-349-LPS D.I. 13) A third
related action by Plaintiff against Novel Laboratories, Inc. ("Novel") remains stayed by
stipulation. (See C.A. No. 08-886-LPS D.I. 22) The stay in the Novel action will be lifted when
the stay in the instant case is lifted. (See id.)
Reexaminations of the two patents-in-suit - U.S. Patent Nos. 6,024,981 (the "'981
patent") and 6,221,392 (the '"392 patent")- are now complete. The Inter Partes Reexamination
Certificate for the '392 patent was issued on September 20, 2013. (See D.I. 81 at 2) An Ex Parte
Reexamination Certificate was issued for the '981 patent on January 9, 2014. (Id.) Due to an
error in this latter certificate, Plaintiff filed a petition for correction, which remains pending. (Id.
at 2-3) 1
Legal Standards. Whether or not to stay litigation pending reexamination by the
PTO of the patents-in-suit is a matter left to the Court's discretion. See Ethicon, Inc. v. Quigg,
849 F.2d 1422, 1426-27 (Fed. Cir. 1998). In exercising this discretion, the Court must weigh the
competing interests of the parties. See Landis v. N Am. Co., 299 U.S. 248, 255 (1936). The
factors courts typically consider in deciding how to exercise this discretion are: (1) whether a stay
will simplify the issues and trial of the case, (2) whether discovery is complete and a trial date
has been set, and (3) whether a stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party. See St. Clair Intellectual Property v. Sony Corp., 2003
WL 25283239, at* 1 (D. Del. Jan. 30, 2003).
Parties' Contentions. Defendant argues the stay should be lifted immediately
because the reexaminations of both patents-in-suit have concluded. (D.1. 72 at 3) Plaintiffs
Defendant contends, and Plaintiff does not disagree, that the issuance of the corrected
Certificate ofReexaminaton for the '981 patent is imminent. (D.I. 76 at 2)
respond that the stay in this case and in the related Novel action should be lifted
contemporaneously with the consolidation of this case and the Novel action and the entry of a
case schedule. (D.I. 75 at 2-3)
Discussion. Given the circumstances, including that Plaintiffs agree that the stay
should be lifted soon, there is no need to analyze the factors the Court typically considers in
deciding whether to stay litigation. Having considered the parties' arguments, the status of the
reexaminations and the litigation, and the parties' representations in their recent filings as to the
time by which they could prepare proposed schedules, the Court perceives no reason to continue
to stay this action.
Accordingly, IT IS HEREBY ORDERED that:
The stay in this action is LIFTED.
The stay in the related Novel action (C.A. No. 08-866) is LIFTED. The Clerk of
Court is directed to enter this Memorandum Order in C.A. No. 08-866 as well.
Civil Action Nos. 10-625 and 08-866 will be CONSOLIDATED.
The parties in C.A. Nos. 10-625 and 08-866 shall propose a scheduling order no
later than March 31, 2014. They shall include in their proposed order language to
consolidate the cases and require filings to be made only in one of the cases.
UNITED STATES DISTRICT JUDGE
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?