Endo Phamaceuticals Inc. et al v. Teva Pharmaceuticals USA Inc. et al

Filing 202

MEMORANDUM regarding the dispute of the form of the final judgment. Signed by Judge Richard G. Andrews on 11/30/2016. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ENDO PHARMACEUTICALS INC.,
et al.,
Plaintiffs,
Civil Action No. 14-1389-RGA

v.
TEVA PHARMACEUTICALS USA INC.,
et al.
Defendants.

MEMORANDUM

The parties dispute the form of the final judgment. (D.I. 193, 196, 197, 200, 201). There
were multiple issues, but only one remains. It concerns the language of the permanent injunction
of paragraph 7.
I earlier expressed concern about the eBay factors (D.I. 198 at 2), and the parties have
resolved that concern by agreement in paragraph 8 of the final judgment. Thus, the parties agree
that there should be an injunction pursuant to 35 U.S.C. § 271(e)(4)(B). That section provides
that the Court may "[for] an act of infringement" in an ANDA case, grant injunctive relief
"against an infringer to prevent the commercial manufacture, use, offer to sell, or sale ... of an
approved drug." Defendants want to include the language "for purposes of this case only."
Defendants make almost no argument in support of the request (D.I. 201 at 2), and the proposed
addition makes little sense to me. Thus, I deny the Defendants' request.
Plaintiffs request that the injunction extend to "any products which are not colorably
different [from the "oxymorphone hydrochloride extended release products that are the subject of

ANDA No. 20-4324"]." I infer this is an extremely unusual request. Plaintiffs did not originally
ask for it in this case, and cite nothing from this District in support of the request. Plaintiffs
provide one final judgment from another District (D.I. 200, Exh. B), but there is no indication
that the language was litigated. There is one case cited from the District of New Jersey where the
matter was actually briefly discussed, see Sanofi-Aventis v. Glenmark Pharms. Inc., 821
F.Supp.2d 681, 697 (D.N.J. 2011), but I am not persuaded that case compels the conclusion that
the language is necessary. 1 Nor does Federal Circuit case law. It seems to me that the "colorably
different" standard is one that generally arises in contempt proceedings. See Abbott Labs v.

Torphar, Inc., 503 F.3d 1372, 1380 n. 3 (Fed. Cir. 2007). It might arise in claim or issue
preclusion proceedings. But there is no showing that it should be incorporated into the language
of otherwise proper injunctive relief, and I decline to do so.
IT IS SO ORDERED this}1 day of November 2016.

1

The New Jersey case's injunction was principally to prohibit the submission of
additional ANDAs. Plaintiffs' request here is designed to be used in litigation concerning an
already submitted ANDA.