GlaxoSmithKline LLC et al v. Glenmark Generics Inc. USA

Filing 54

MEMORANDUM ORDER re (38 in 1:14-cv-00877-LPS-CJB, 39 in 1:14-cv-00878-LPS-CJB) REPORT AND RECOMMENDATION -- Objections are OVERRULED and the Report is ADOPTED re (18 in 1:14-cv-00877-LPS-CJB) MOTION to Dismiss filed by Glenmark Generics Inc. USA; and (20 in 1:14-cv-00878-LPS-CJB) MOTION to Dismiss filed by Teva Pharmaceuticals USA, Inc. are GRANTED-IN-PART and DENIED-IN-PART. Signed by Judge Leonard P. Stark on 8/10/15. Associated Cases: 1:14-cv-00877-LPS-CJB, 1:14-cv-00878-LPS-CJB (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GLAXOSMITHKLINE LLC,
SMITHKLINE BEECHAM (CORK)
LIMITED,
Plaintiffs,
Civil Action No. 14-878-LPS-CJB

v.
TEVA PHARMACEUTICALS USA, INC., :
Defendant.

GLAXOSMITHKLINE LLC,
SMITHKLINE BEECHAM (CORK)
LIMITED,
Plaintiffs,
Civil Action No. 14-877-LPS-CJB

v.
GLENMARK GENERICS INC., USA,
Defendant.

MEMORANDUM ORDER
WHEREAS, Magistrate Judge Burke issued a 22-page Report and Recommendation (the
"Report") (C.A. No. 14-877 1 D.I. 38), dated April 22, 2015, recommending that Defendant
Glenmark Inc., USA ("Glenmark") and Teva Pharmaceuticals USA, Inc.'s ("Teva") (collectively,
"Defendants") motion to dismiss Plaintiffs GlaxoSmithKli1;1e LLC ("GSK") and SmithKline
Beecham (Cork) Limited's (collectively, "Plaintiffs") First Amended Complaints ("FAC"),
pursuant to Federal Rule of Civil Procedure

~2(b)(6)

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(D.I. 18) ("Motions") be granted with

Unless otherwise noted, all citations to the docket are to C.A. No. 14-877-LPS-CJB.
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respect to a portion of Plaintiffs' claims for induced infringement and be denied with respect to
another portion of the claims for induced infringement and also denied with respect to Plaintiffs'
claims for contributory infringement;
WHEREAS, on May 11, 2015, Defendants objected to the Report's recommendation to
deny dismissal of the claims for contributory infringement ("Objections") (D.I. 42);
WHEREAS, on May 29, 2015, Plaintiffs responded to the Objections (D.I. 48);
WHEREAS, the Court has considered the Motions de novo, as they present casedispositive issues, see 28 U.S.C. § 636(b)(1 ); Fed. R. Civ. P. 72(b)(3), and has further reviewed
all of the pertinent filings;
NOW THEREFORE, IT IS HEREBY ORDERED that:
1.

Defendants' Objections (D.I. 42) are OVERRULED, Judge Burke's Report (D.I.

39) is ADOPTED, and Defendants' Motions (D.I. 18; C.A. No.14-878 D.I. 20) are GRANTEDIN-PART and are DENIED-IN-PART, to the same extent as recommended by the Report.
2.

The Court agrees with the Report that the FACs state plausible claims that

Defendants contribute to infringement of the patent-in-suit. The only dispute is whether the
FACs contain adequate allegations that Defendants' drug products have no substantial noninfringing uses. It is undisputed that there are non-infringing uses for Defendants' products.
Nonetheless, taking Plaintiffs' well-pleaded factual allegations as true (including that the "vast
majority'' of use will be for infringing purposes, that use for treatment of other disorders is
relatively rare) and drawing all reasonable inferences therefrom in Plaintiffs' favor, the FACs
plausibly allege that, just as Plaintiffs' product is used in a manner coming within the scope of
.
.

the claims, .so, too, do the intended uses of Defendants' products. The Court agrees with

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Plaintiffs that much of what Def~ndants argue in their Objections "are points to be raised at trial
or in a summary [judgment] motion" and are not amenable to resolution at the pleadings stage.
(D .I. 48 at 6) The Court further agrees that Defendants' contention regarding the import of
treatment regimens lasting less than six months does not illustrate any deficiency in the
pleadings, although it might suggest a dispute requiring resolution during the claim construction
process. (See id. at 9)

HON. L NARD P. ST
UNITED STATES DISTRICT COURT

August 10, 2015
Wilmington, Delaware

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