Cephalon, Inc. et al v. Slayback Pharma Limited Liability Company

Filing 406

MEMORANDUM.. Signed by Judge Colm F. Connolly on 7/6/2020. (fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
CEPHALON, INC., et al.,
Plaintiffs,
Civil Action No. 17-1154-CFC
CONSOLIDATED

V.

SLA YBACK PHARMA LIMITED
LIABILITY CO., et al.,
Defendants.

MEMORANDUM
On April 27, 2020, after a seven-day bench trial in this Hatch-Waxman
patent case, I issued pursuant to Federal Rule of Civil Procedure 52(a) an Opinion
in which I set forth my findings of fact and conclusions of law. D.I. 394. I held in
the Opinion that the 11 patent claims asserted by the Plaintiff at trial were not
invalid and that Defendants infringed and induced the infringement of those
claims. D.I. 394 at 68. I then asked the parties to submit a proposed order of final
judgment consistent with my Opinion. D.I. 395.
The parties are unable to agree on a proposed final judgment order because
they dispute which claims should be included in the judgment. D.I. 401 at 1.
Defendants argue that the judgment should be limited to the 11 claims asserted at
trial. D.I. 404 at 1; D.I. 401-2 i-fil 1-8. Plaintiffs propose a judgment that covers
those 11 claims plus 86 claims they had asserted earlier in the litigation. D.I. 402

at 2; D.I. 401-1 ,I 11.
The parties agree that resolution of their dispute turns on the meaning of two
paragraphs in two stipulated orders I signed before trial. See D.I. 402 at 1; D.I. 404
at 1-2. Paragraph 8 of the first Stipulation and Order, which applies to all parties
save Defendant Slayback Pharma LLC, reads: "The parties stipulate that a
determination as to non-infringement and/or invalidity of the asserted claims at
trial will result in a final judgment as to each Defendant of all patents that have
been asserted by Plaintiffs in this case as to each such Defendant, respectively,
with the exception of U.S. Patent No. 8,791,270, which has been resolved by the
granting of covenants not to sue and/or consent judgments." D.I. 320 ,r 8.
Paragraph 4 of the second Stipulation and Order reads: "Plaintiffs and Slay back
stipulate that a determination as to invalidity of the asserted claim at trial will
result in a final judgment as to Slay back of all claims of the patent that has been
asserted by Slayback in this case, with the exception of U.S. Patent No. 8,791,270,
which has been resolved by the granting of a consent judgment." D.I. 319 ,r 4.
Defendants argue that the stipulations apply "only to a situation in which
Defendants won"-i.e., a situation in which I found that the asserted claims were

invalid and/or not infringed-because the stipulations apply only to a
"determination as to non-infringement and/or invalidity." D.I. 404 at 1-2.
(emphasis in original). Plaintiffs counter that "Defendants misread the stipulations
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to apply only to determinations of non-infringement or invalidity-not as they
actually provide, to determinations 'as to non-infringement and/or invalidity."'
D.I. 402 at 3 (emphasis in original) (citation omitted).
At the outset, "it must be said that as to is an all-purpose preposition to be
avoided whenever a more specific preposition will do." Bryan A. Gamer,

Garner's Modern English Usage 79 (4th ed. 2016). The phrase is typically used as
"a passable shorthand form of regarding, with regard to, or on the question of, and
it "is also (minimally) defensible when used for about." Id. at 80. It is clear to me
now, and it was clear to me at the time I signed the stipulated orders, that the
parties used "as to" in their stipulations in these "passable shorthand" and
"defensible" (even if minimally) ways. Thus, the stipulations apply to any
determination I made regarding, about, or on the questions of noninfringement and
invalidity of the asserted claims.
It is equally clear that the stipulations do not apply only to "a situation in

which Defendants won." My determination that Plaintiffs had established that the
Defendants' proposed products infringe the asserted claims necessarily entailed a
determination that Defendants had failed to prevail on their claim that the proposed
products were noninfringing. Defendants' contention that a "determination as to
non-infringement" differs from a "determination as to infringement" makes no
sense in a case like this one where Plaintiffs seek a declaratory judgment of
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infringement and Defendants seek a declaratory judgment of noninfringement.
The accused products in such a case either infringe the asserted patents or don't
infringe the asserted patents. I note in this regard that even though all the
Defendants accused by Plaintiffs of infringement filed counterclaims seeking
declaratory judgments of noninfringement, those Defendants never distinguished
Plaintiffs' infringement claims from Defendants' noninfringement counterclaims
until I asked the parties to meet and confer about a final judgment order. For
example, in the jointly-filed Pretrial Order, the Defendants proposed the following
order of presentation of evidence at trial:
Phase I
Phase II
Phase III
Phase IV

Plaintiffs' presentation of asserted patents and
case-in-chief on infringement
Defendants' response on infringement, and casein-chief on invalidity
Plaintiffs' rebuttal on infringement and response
on invalidity
Defendants' rebuttal on invalidity

D.I. 307 at 19. Defendants made no mention of"non-infringement" because it
would have been redundant of "infringement."
In the same vein, "invalid" and "not invalid" are inseparable concepts in a
patent case. My determination that the asserted claims were not invalid constitutes
a determination on the question of invalidity.
Defendants argue that the stipulated orders apply only to findings of
"invalidity" as opposed to findings of"validity." D.I. 404 at 1 (emphasis in
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original); see also id. at 3 (arguing that "[t]he stipulation does not provide
automatic judgment to Plaintiffs for infringement and validity."). But it is not the
role of the court (or jury) to declare a patent valid. When a patent's validity is
challenged, the court (or jury) is tasked with deciding if the challenger has proven
that the patent is invalid. The "determination" to be made in such cases is whether
the patent is invalid or not invalid. Under 35 U.S.C. § 282, "[a] patent shall be
presumed valid." Thus, "[a] suit brought only for a declaration that a patent is
valid would be an anomaly, and a patentee who in an infringement suit asks the
court to hold his or her patent valid states a redundancy .... " Robert L. Harmon,
Cynthia A. Homan & Laura A. Lydigsen, Patents and the Federal Circuit,
§ l.5(b )(i), at 40 (13th ed. 2017). In this case, I detennined that the asserted claims
were "not invalid." D.I. 394 at 68. That determination is clearly "a determination
as to invalidity."
Because the stipulated orders apply to my determinations that the asserted
claims are infringed and not invalid, the judgment in this case should extend to all
the claims of all the patents that were asserted in the case by Plaintiffs except for
U.S. Patent No. 8,791,270. The first Stipulation and Order provides in relevant
part that "a dete1mination as to non-infringement and/or invalidity of the asserted
claims at trial will result in a final judgment as to each Defendant of all patents

that have been asserted by Plaintifft in this case as to each such Defendant,
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respectively." D.I. 320 ,r 8 (emphasis added). The phrase "all patents that have
been asserted by Plaintiffs in this case" is unambiguous. It clearly covers every
claim of every patent asserted by Plaintiffs at any time in the case before the date
of the Stipulation and Order. The language of the second Stipulation and Order is
also unambiguous. It provides in relevant part that "a determination as to
invalidity of the asserted claim at trial will result in a final judgment as to Slay back
of all claims of the patent that has been asserted by Slayback in this case." D.I.
318 ,r 4 (emphasis added). Thus, pursuant to the second stipulated order, my
determination that claim 13 of U.S. Patent No. 9,572,887 is not invalid requires a
judgment against Slay back that covers all claims of that patent.
For these reasons, I will enter the Order proposed by Plaintiffs.

July 6, 2020

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