Novartis Pharmaceuticals Corporation et al v. Breckenridge Pharmaceutical Inc.

Filing 192

MEMORANDUM ORDER regarding a permanent injunction (see Memorandum Order for further details). Signed by Judge Richard G. Andrews on 5/16/2017. Associated Cases: 1:14-cv-01043-RGA, 1:14-cv-01196-RGA, 1:14-cv-01289-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

NOVARTIS PHARMACEUTICALS
CORPORATION and NOVARTIS AG,
Plaintiff;
v.

Civil Action No. 1 :14-cv-1043-RGA

BRECKENRIDGE PHARMACEUTICAL,
INC.,
Defendant.

NOVARTIS PHARMACEUTICALS
CORPORATION and NOVARTIS AG,
Plaintiff;
Civil Action No. 1:14-cv-1196-RGA

V.

ROXANE LABORATORIES, INC.,
Defendant.
NOVARTIS PHARMACEUTICALS
CORPORATION and NOVARTIS AG,
Plaintiff;
Civil Action No. 1 :14-cv-1289-RGA

v.
PAR PHARMACEUTICAL, INC.,
Defendant.

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MEMORANDUM ORDER

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The parties dispute whether Plaintiffs are entitled to an injunction under 35 U.S.C.
§ 271(e)(4)(B) prohibiting Defendants from commercially manufacturing, selling, offering for
sale, and/or importing into the United States the product that is the subject of Defendants'
ANDAs. There is no dispute that FDA approval of Defendants' ANDAs should be enjoined
until after the expiration of Plaintiffs period of pediatric exclusivity. Plaintiffs, however, seek to
enjoin Defendants from a broad range of what Defendants contend are non-infringing activities.
On the record as it stands and for the reasons given by Judge Stark in Bayer Pharma and Judge
Robinson in Alcon, I do not think Plaintiffs are entitled to such an injunction. Bayer Pharma AG
v. Watson Labs., Inc., 2016 WL 7468172, at *2-3 (D. Del. Dec. 28, 2016); Alcon, Inc. v. Teva
Pharm. USA, Inc., 2010 WL 3081327, at *2-3 (D. Del. Aug. 5, 2010).
While I am dubious about whether Plaintiffs can establish that they entitled to the
injunction they request, I am also mindful that I do not permit this issue to be addressed at trial.
Therefore, if Plaintiffs believe they are entitled to a permanent injunction under§ 271(e)(4)(B),
they should request a hearing at which they will need to establish (1) they have suffered or will
suffer irreparable harm in the absence of an injunction; (2) available legal remedies are
inadequate to compensate for this harm; (3) the balance of hardships favors a permanent
injunction; and (4) the public interest supports the issuance of a permanent injunction. eBay Inc.
v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

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Entered this

Jt day of May, 2017.

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