Shire Development, LLC et al v. Mylan Pharmaceuticals, Inc. et al

Filing 230

ORDER granting in part and denying in part Plaintiffs' Expedited Motion for Supplemental Briefing and Adjournment of Expert Discovery Deadlines 221 , 224 . Signed by Judge Charlene Edwards Honeywell on 2/24/2015. (AHH)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
SHIRE DEVELOPMENT, LLC, SHIRE
PHARMACEUTICAL DEVELOPMENT,
INC., COSMO TECHNOLOGIES
LIMITED and NOGRA PHARMA
LIMITED,
Plaintiffs,
v.

Case No: 8:12-cv-1190-T-36AEP

MYLAN PHARMACEUTICALS, INC. and
MYLAN, INC.,
Defendants.
___________________________________/
ORDER
This cause comes before the Court upon the Expedited Motion for Supplemental Briefing
and Adjournment of Expert Discovery Deadlines, filed by Plaintiffs Shire Development, LLC,
Shire Pharmaceutical Development, Inc., Cosmo Technologies Limited, and Nogra Pharma
Limited (collectively, “Shire”) (Doc. 221). Defendants Mylan Pharmaceuticals Inc. and Mylan
Inc. (collectively, “Mylan”) responded in opposition to the Motion (Doc. 228). The Court, having
considered the parties’ submissions and being fully advised in the premises, will now GRANTIN-PART and DENY-IN-PART the Motion.
I.

BACKGROUND
This dispute is but one of many lawsuits brought by Shire alleging the infringement of

United States Patent No. 6,773,720 (the “#720 Patent”). Prior to bringing suit against Mylan, Shire
filed suit against, inter alia, Watson Pharmaceuticals, Inc. (“Watson”) in the Southern District of
Florida. See Shire Development LLC v. Watson Pharmaceuticals, Inc., Case No. 12-cv-60862
(S.D. Fla.). The parties in that case engaged in the claim construction process in late 2012, and

the district court issued a claim construction order in January 2013. See Shire Development LLC
v. Watson Pharmaceuticals, Case No. 12-cv-60862, 2013 WL 174843 (S.D. Fla. Jan. 17, 2013)
(“Watson I”). In its order, the district court construed eight terms, including “inner lipophilic
matrix” and “outer hydrophilic matrix.” See id. at *4-5. Dissatisfied with the outcome of that
order, Watson appealed it to the Federal Circuit, which reversed the district court’s construction
of those two terms in an order dated March 2014. See Shire Development, LLC v. Watson
Pharmaceuticals, Inc., 746 F.3d 1326, 1334 (Fed. Cir. 2014) (“Watson II”). Shire thereafter filed
a petition for certiorari to the Supreme Court.
While Shire’s petition for certiorari in Watson was pending, the parties engaged in claim
construction proceedings in this case before this Court. The parties filed their opening claim
construction briefs in October 2014, Docs. 175, 178, and their responses to those briefs in
November 2014, Docs. 192, 194. The Court held a Markman hearing in December 2014. Doc.
208. As in Watson, the construction of the terms “inner lipophilic matrix” and “outer hydrophilic
matrix” is in dispute. See, e.g., Docs. 175 and 178.
In January 2015, the Supreme Court issued its opinion in Teva Pharmaceuticals USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831 (2015). The dispute before the Supreme Court in Teva arose over
whether a claim was indefinite under 35 U.S.C. § 112(b). See id. at 832. After considering
conflicting expert evidence, the district court concluded that the claim was sufficiently definite
and held that the patent was therefore valid. See id. Upon appeal, the Federal Circuit reviewed de
novo all aspects of the district court’s claim construction, including the district court’s
determination of subsidiary facts, and reversed, finding the claim indefinite and the patent invalid.
See id. at 833.

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Subsequently, the Supreme Court granted Teva’s petition for certiorari, and vacated the
Federal Circuit’s opinion. See id. at 843. In so doing, it began by noting that Federal Rule of Civil
Procedure 52(a)(6) requires an appeals court to accept a district court’s factual findings “unless
clearly erroneous.” See id. at 836-37. It then noted that there were no convincing grounds for
creating an exception to that rule in the claim construction context. See id. at 837. It concluded,
therefore, that a district court’s factual findings preceding the function of construction must, like
all other factual determinations, be reviewed not de novo, but rather for clear error. See id. at 838.
The Supreme Court, however, was careful to specify that, in the context of claim construction,
clear error review applies only to the district court’s findings as to extrinsic evidence—and that
“when the district court reviews only evidence intrinsic to the patent . . . the judge’s determination
will amount solely to a determination of law, and the Court of Appeals will review that
construction de novo.” Id. at 841.
Shortly after the Supreme Court issued Teva, it granted Shire’s petition for certiorari in
Watson, vacated Watson II, and remanded the case for further consideration in light of Teva. See
Shire Development, LLC v. Watson Pharmaceuticals, Inc., Case No. 14-206, 2015 WL 303221
(Jan. 26, 2015). Shire now argues that, in light of the Supreme Court’s decision to vacate Watson
II, it should be afforded leave to submit supplemental briefing on the terms “inner lipophilic
matrix” and “outer hydrophilic matrix.” Shire also requests that the Court adjust the case schedule
for expert reports and discovery to follow the resolution of claim construction.
II.

DISCUSSION
District courts enjoy broad discretion in deciding how best to manage the cases before

them. See Chudasama v. Mazda Motor Corp., 123 F.3d 1353, 1366 (11th Cir. 1997). Here, Shire
is essentially seeking another round of claim construction briefing, as well as a stay of the case

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until the Court resolves all of the claim construction issues in this case, including those raised in
the supplemental briefing. The Court declines to grant Shire’s request, because supplemental
briefing would not be necessary or even helpful. Importantly, Teva was explicit that the clear error
standard of review applies only to subsidiary findings of fact, and that findings of law, based on
intrinsic evidence, are still to be reviewed de novo. After a careful review of Watson I and Watson
II, the Court agrees with Mylan that, in Watson, both the district court and the Federal Circuit
construed the terms “inner lipophilic matrix” and “outer hydrophilic matrix” solely on the basis of
intrinsic evidence. See Watson I at *4-5 (in construing “inner lipophilic matrix” and “outer
hydrophilic matrix,” relying only on the prosecution history, claims, specification, and plain
meaning of the terms); Watson II at 1331-33 (in reversing the district court’s construction of “inner
lipophilic matrix” and “outer hydrophilic matrix,” reviewing only “the intrinsic evidence as a
whole,” including the language of the claims, specification, prosecution history, structure of the
claim, ordinary meaning of the claim terms, and patent’s description of the invention). The Federal
Circuit’s opinion regarding these two terms is therefore unlikely to change in light of Teva.
Although the Court finds additional claim construction briefing on these terms to be
unnecessary, the Court agrees with Shire that, because the Court has yet to issue an order on the
terms already briefed and argued and expert discovery deadlines are fast approaching, an
adjustment to the case schedule is warranted. Granting a brief and definite extension of the
discovery and case deadlines to provide the parties with the benefit of the Court’s claim
construction order would preserve the parties’ resources and simplify the issues, and would not
unduly prejudice Mylan. See Alps South, LLC v. The Ohio Willow Wood Co., Case No. 09-cv386, 2010 WL 2465176, at *1 (M.D. Fla. June 16, 2010) (“In determining whether to grant a stay,
courts generally examine three factors: (1) whether a stay will unduly prejudice or tactically

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disadvantage the non-moving party; (2) whether a stay will simplify the issues and streamline the
trial; and (3) whether a stay will reduce the burden of litigation on the parties and on the court.”)
(quotation marks and citations omitted).
Accordingly, it is hereby ORDERED:
1.

Shire’s Expedited Motion for Supplemental Briefing and Adjournment of Expert
Discovery Deadlines (Doc. 221) is GRANTED-IN-PART and DENIED-INPART.

2.

The Court will issue by separate order a Fifth Amended Case Management and
Scheduling Order that will extend all deadlines.

3.

The Motion is otherwise DENIED.

DONE AND ORDERED in Tampa, Florida on February 24, 2015.

Copies to:
Counsel of Record and Unrepresented Parties, if any

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