Reckitt Benckiser Pharmaceuticals Inc. et al v. Watson Laboratories Inc. et al

Filing 479

MEMORANDUM ORDER: The Motion to Open the Judgment (D.I. 460 ) is DENIED. The Motion for New Testimony and Findings Pursuant to Rule 52(b) or Rule 59 is DENIED (D.I. 459 ) (see Memorandum Order for further details). Signed by Judge Richard G. Andrews on 8/31/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
RECKITT BENCKISER
PHARMACEUTICALS INC., RB
PHARMACEUTICALS LIMITED, and
MONOSOL RX, LLC,
Plaintiffs,

Civil Action No. 13-1674-RGA

v.
WATSON LABORATORIES, INC. and
ACTAVIS LABORATORIES UT, INC.,
Defendants.
RECKITT BENCKISER
PHARMACEUTICALS INC., RB
PHARMACEUTICALS LIMITED, and
MONOSOL RX, LLC,
Plaintiffs,

Civil Action No. 14-422-RGA

v.
PAR PHARMACEUTICAL, INC. and
INTELGENX TECHNOLOGIES CORP.,
Defendants.

MEMORANDUM ORDER

Defendants Watson Laboratories, Inc. and Actavis Laboratories UT, Inc. 1 (collectively,
"Watson") move to open the judgment pursuant to Federal Rule of Civil Procedure 59. (C.A.
No. 13-1674, D.I. 460). Defendants Par Pharmaceutical, Inc. and Intelgenx Technologies Corp.
(collectively, "Par") move for new testimony and findings pursuant to Federal Rule of Civil
Procedure 52(b) or Federal Rule of Civil Procedure 59. (C.A. No. 14-422, D.I. 459).

1

Defendant Watson Laboratories, Inc. is now known as Actavis Laboratories UT, Inc. (C.A. No. 14-1451, D.I. 2282, Admitted Fact No. 6).

1

I.

LEGAL ST AND ARDS

Federal Rule of Civil Procedure 59(a)(2) provides:
After a nonjury trial, the court may, on motion for a new trial, open the judgment
if one has been entered, take additional testimony, amend findings of fact and
conclusions oflaw or make new ones, and direct the entry of a new judgment.
Fed. R. Civ. P. 59(a)(2); see also Fed. R. Civ. P. 59(e) ("A motion to alter or amend a judgment
must be filed no later than 28 days after the entry of the judgment."). "[A] judgment may be
altered or amended if the party seeking reconsideration shows at least one of the following
grounds: (1) an intervening change in the controlling law; (2) the availability of new evidence
that was not available when the court granted the[] judgment; or (3) the need to correct a clear
error oflaw or fact or to prevent manifest injustice." United States ex rel. Schumann v.
AstraZeneca Pharm. L.P., 769 F.3d 837, 848-49 (3d Cir. 2014). Federal Rule of Civil Procedure

52(b) provides:
On a party's motion filed no later than 28 days after the entry of judgment, the
court may amend its findings--or make additional findings--and may amend the
judgment accordingly. The motion may accompany a motion for a new trial under
Rule 59.
Fed. R. Civ. P. 52(b). The standard for reconsideration under Rule 52(b) is similar to that under
Rule 59(a)(2). See Gutierrez v. Gonzales, 125 F. App'x 406, 417 (3d Cir. 2005).
II.

DISCUSSION

I entered final judgment on June 28, 2016. (C.A. No. 13-1674, D.I. 452, D.I. 453). On
June 29, 2016, I construed the "dried" term in Reckitt Benckiser Pharmaceuticals, Inc. v. Teva
Pharmaceuticals USA, Inc. (C.A. No. 14-1451, D.I. 175). Since Teva, I further clarified my

construction of"dried" in lndivior Inc. v. Mylan Technologies Inc. (C.A. No. 15-1016, D.I. 87,
93). I also recently issued an opinion regarding Watson's and Par's non-infringement of the
related "drying" limitation in U.S. Patent No. 8,900,497 (the "'497 patent"), claim 24. (C.A. No.

2

14-1451). On September 30, 2016, Watson submitted a Major Amendment to Watson's ANDAs
to propose a commercial scale-up manufacturing process for Watson's Proposed ANDA Product
(the "new" process). (C.A. No. 14-1451, D.I. 228-2, Exh. 1 at p. 10). My previous Trial
Opinion related only to ANDA Nos. 204383 and 207087 (the "old" process). (C.A. No. 131674, D.I. 446 at 5, D.I. 453).
Watson argues that the judgment of infringement should be opened to prevent manifest
injustice under Federal Rule of Civil Procedure 59. Watson argues that the central issue is that in
light of my construction of "dried" in Teva, conventional top-down drying was excluded and
Watson's new process exclusively uses top-down drying such that it does not infringe. Watson
argues that opening the judgment will not prejudice plaintiffs because plaintiffs would have a
chance to fully litigate this issue with respect the '497 patent. I have recognized that the
construction of the term "dried" in the '514 patent is the same as the construction of the term
"drying" in the '497 patent. (C.A. No. 15-1016, D.I. 87, 93). Watson argues that the judgment
should be opened to harmonize the claim constructions. Watson argues that there is a strong
public interest in permitting Watson's ANDA product to enter the market. Par's arguments are
substantially similar to those of Watson's. Par additionally argues for relief under Federal Rule
of Civil Procedure 52(b).
Plaintiffs argue that prior to judgment, Defendants did not ask me to construe the term
"dried." Plaintiffs argue that Defendants could have avoided the outcome. Plaintiffs are clearly
correct. Defendants jointly submitted with Teva a "Joint Claim Construction Statement" on
November 17, 2015, in which Teva's specialized construction of "drying" was jointly proposed.
(See C.A. No. 14-1451, D.I. 92-1at10-12, 19). Plaintiffs argue that Defendants' decision not to
raise that construction here was a strategic one to give them stronger potential invalidity

3

arguments at the expense of potential infringement arguments. Plaintiffs argue that there is no
policy requiring absolute uniformity in claim construction. (C.A. No. 13-1674, D.I. 467 at 12
(citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996) ("[T]reating
interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional
certainty .... "))). Plaintiffs argue that Defendants' position is contrary to the public interest in
achieving finality and conserving judicial resources. As such, Plaintiffs argue there is no
manifest injustice. Watson responds that Watson had no reason to propose the "dried"
construction because it would be irrelevant to the infringement inquiry under the facts then
known because Watson's old process used a bottom-mounted heated coating roller.
I place significant weight on the fact that Par was aware of Teva's specialized
construction of "dried" but nonetheless did not pursue that construction in this case. I think the
only reasonable conclusion is that this was a strategic decision made by Par. Par has thus fully
waived its right to contest this issue. See Lazare Kaplan Int'/, Inc. v. Photoscribe Techs., Inc.,
628 F.3d 1359, 1376 (Fed. Cir. 2010) ("[L]itigants waive their right to present new claim
construction disputes if they are raised for the first time after trial."). See also Butamax

Advanced Biofuels LLC v. Gevo Inc., 2015 WL 4919975, at *1 (D. Del. Aug. 18, 2015) ("A
motion for reconsideration is not properly grounded on a request that a court rethink a decision
already made and may not be used 'as a means to argue new facts or issues that inexcusably were
not presented to the court in the matter previously decided."').
Watson also does not get a pass. I am far from sympathetic to Watson given that they
knew of Teva's construction well before my judgment. At no time prior to judgment did Watson
request a different construction of "dried." By failing to raise this issue, Watson implicitly
conceded that the term is to be accorded its plain and ordinary meaning. This potentially gave

4

Watson a stronger invalidity argument at the expense of noninfringement. Furthermore, Watson
is self-contradictory as to whether Watson had a good reason not to propose the Teva
construction prior to trial. In Watson's attempt to reopen the judgment, Watson suggests that the
original ANDA process would infringe under the Teva construction and thus Watson had no
reason to propose the construction. In a deposition, Watson's expert, Dr. Gogolin, undercut this
reason when he testified that Watson's original ANDA process did not infringe the Teva
construction. (See C.A. 13-1674, D.I. 475-3 at 192:4-193:13, D.I.

475-1~~40-58,

D.I. 475-2 ~

83). In light of these contradictory positions, I have credibility concerns with respect to
representations made in Watson's motion. I am not persuaded that Watson should receive a
second bite of the apple.
As to the other considerations Defendants raise, while there is a public interest in
permitting market entry, this is offset by the public interest in achieving finality and judicial
efficiency. Defendants are sophisticated repeat litigants represented by experienced national law
firms. They should be bound by the litigation decisions they make. Limited weight is given to
Defendants' argument that Plaintiffs would have a chance to litigate the issue with respect to the
'497 patent. With respect to consistency, I think having consistency across decisions is
important, but, I also recognize that absolute uniformity is not required. See Markman, 517 U.S.
at 391. Further, although Teva is not complaining, I do not see why Defendants should be able
to take advantage of their competitor's litigation decisions, when they have made a contrary
decision which they now regret. Considering all of the above, Defendants fail to demonstrate
manifest injustice would result. 2

2
Par makes the further argument that a change in claim construction amounts to a "change in the controlling law." I
am not persuaded by this because my claim constructions are not binding precedent on anyone, including me. The
"change in the controlling law" is meant to refer, in the usual case, to a decision of the Supreme Court or the Court
of Appeals.

5

.

'

III.

CONCLUSION
Watson's Rule 59 Motion to Open the Judgment (C.A. No. 13-1674, D.l. 460) is

DENIED. Par's Motion for New Testimony and Findings Pursuant to Rule 52(b) or Rule 59 is
DENIED. (C.A. No. 13-1674, D.l. 459). It is SO ORDERED this3 { day of August, 2017.

6