Galderma Laboratories Inc. et al v. Amneal Pharmaceuticals LLC et al

Filing 191

MEMORANDUM ORDER re 165 MOTION for Leave to File Amended Answer filed by Amneal Pharmaceuticals LLC, Amneal Pharmaceuticals Co (I) Pvt Ltd is GRANTED. Signed by Judge Leonard P. Stark on 9/30/13. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GALDERMA LABORATORIES INC.,
GALDERMA LAB ORATORIES, L.P ., and
SUPERNUS PHARMACEUTICALS, INC.,
Plaintiffs,
C.A. No. 11-1106-LPS

v.

AMNEAL PHARMACEUTICALS, LLC
and AMNEAL PHARMACEUTICALS CO. (I)
PVT. LTD.,
Defendants.

MEMORANDUM ORDER
Pending before the Court is Defendants' Amneal Pharmaceuticals, LLC and Amneal
Pharmaceuticals Co. (I) PVT. LTD.'s ("Amneal") Motion for Leave to File Amended Answer to
the Second Supplemental Complaint of Plaintiffs Galderma Laboratories Inc., Galderma
Laboratories, L.P., and Supemus Pharmaceuticals, Inc. ("Galderma"). (D.I. 165) For the reasons
set forth below, the Court will GRANT Amneal's motion.
1.

Galderma filed its complaint against Amneal on November 8, 2011. (D.I. 1) On

July 24, 2012, by stipulation of the parties agreed to by the Court, Gal derma filed its First
Supplemental Complaint, adding a claim for infringement of the recently-issued U.S. Patent No.
8,206,740 (the "'740 patent"). (D.I. 72, 73, 74) On November 12, 2012, by stipulation ofthe
parties agreed to by the Court, Galderma filed its Second Supplemental Complaint. (D.I. 127,
128)
2.
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2)

The deadline for Amneal to amend its pleadings was August 15, 2012. (D.I. 29

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On January 10, 2013, the last day offact discovery (D.I. 147), Amneal moved to

amend its answer to add affirmative defenses and/or counterclaims of unenforceability due to
inequitable conduct, unclean hands, and breach of contract (D.I. 165).
4.

Pursuant to Federal Rule of Civil Procedure 16(b)(4), "[a] schedule may be

modified only for good cause and with the judge's consent." Good cause is present when the
schedule cannot be met despite the moving party's diligence. See Leader Techs., Inc. v.
Facebook, Inc., 2010 WL 2545959, at *3 (D. Del. June 24, 2010). Pursuant to Federal Rule of

Civil Procedure 15, courts generally grant motions to amend absent a showing of undue delay,
bad faith, or dilatory motive on the part of the movant, undue prejudice to the opposing party, or
futility ofthe amendment. See Dole v. Area Chern. Co., 921 F.2d 484,487 (3d Cir. 1990).
5.

Amneal states that it could not have amended its answer to comply with the

Scheduling Order and pleading requirements of inequitable conduct and unclean hands, and has
shown good cause for its requested post-deadline amendment. Amneal asserts that it discovered
facts supporting its inequitable conduct claim after the amendment deadline. Specifically, it was
only during the deposition of prosecution counsel in December 2012 that Amneallearned that
prosecution counsel only disclosed a portion of data of which counsel was aware and which
Amneal contends was material. (See, e.g., D.I. 166 at 8-9) Amneal asserts that it also discovered
facts supporting its unclean hands claim when it learned, again in December 2012, of allegations
that litigation counsel improperly participated in patent prosecution. Under the circumstances,
the Court finds that Amneal's proposed amendment is not untimely.
6.

Further, the Court disagrees with Galderma's assertion that Amneal's claims,

taken as true (as they must be at this point), are futile (putting aside whether they are likely to be
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proven). With respect to inequitable conduct, the Court may need to evaluate for itself the
credibility of the former prosecution counsel who testified to having no recollection of why the
data in question (which prosecution counsel participated in preparing) was not shared with the
PTO, particularly as prosecution counsel was unable to provide an explanation for the omission.
Similarly, with respect to the unclean hands and breach of contract allegations, the Court cannot
rule out the possibility that litigation counsel - in what Galderma appears to acknowledge may
have been a "technical breach" of the terms of the offer of confidential access (D.I. 175 at 17)inadvertently "used" confidential information in some respect in the course of repeated
communications with prosecution counsel. See generally In re Deutsche Bank Trust Co. Ams.,
605 F.3d 1373, 1378 (Fed. Cir. 2010) ("[I]t is very difficult for the human mind to
compartmentalize and selectively suppress information once learned, no matter how wellintentioned the effort may be to do so.") (internal quotation marks omitted).
7.

Finally, the Court perceives no basis for finding that Galderma will be unduly

prejudiced by the grant of Amneal's motion. Amneal filed its motion nearly a year before trial
was scheduled to begin, and even now trial remains more than three months away. Amneal
seeks, and will be provided, only "limited" discovery relating to its new claims.

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Accordingly, Amneal's motion (D.I. 165) is GRANTED. Amneal shall, no later than
October 7, 2013, file an amended answer in substantially the form it has proposed (see D.I. 1611). The parties shall meet and confer and submit, no later than October 7, 2013, their
proposal(s) for any additional limited discovery and any other modification of the Scheduling
Order necessitated by today's ruling.

Dated: September 30, 2013
Wilmington, Delaware

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