Momenta Pharmaceuticals, Inc. et al v. Teva Pharmaceuticals Industries Ltd. et al
Filing
260
Judge Nathaniel M. Gorton: ORDER entered. MEMORANDUM AND ORDER: "For the foregoing reasons, Teva's motion for attorneys' fees (Docket No. 233 ) is DENIED.So ordered."(Moore, Kellyann)
United States District Court
District of Massachusetts
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Plaintiffs,
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v.
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TEVA PHARMACEUTICALS USA, INC., )
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Defendant.
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MOMENTA PHARMACEUTICALS, INC.
AND SANDOZ INC.,
Civil Action No.
10-12079-NMG
MEMORANDUM AND ORDER
GORTON, J.
Plaintiffs Momenta Pharmaceuticals, Inc. (“Momenta”) and
Sandoz Inc. (“Sandoz”) (collectively, and for simplicity,
“Momenta”) brought this patent infringement action against
defendant Teva Pharmaceuticals USA, Inc. (“Teva”).
The Court
allowed Teva’s motion for summary judgment and entered final
judgment in favor of Teva in January, 2014.
Teva now moves for
attorneys’ fees and costs under 35 U.S.C. § 285.
III. Background and Procedural History
In February, 2010, Teva announced that it intended to sell
generic enoxaparin, an anticoagulant used to prevent blood
clots, as soon as it obtained approval from the Food and Drug
Administration (FDA).
Momenta beat Teva to the punch, however,
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by obtaining FDA approval to market generic enoxaparin in the
United States in July, 2010.
In December, 2010, Momenta filed the instant action against
Teva, alleging that Teva infringed two of its patents: U.S.
Patent No. 7,575,886 (“the ‘886 patent”) and U.S. Patent No.
7,790,466 (“the ‘466 patent”).
Teva counterclaimed for a
declaratory judgment of non-infringement and patent invalidity.
The ‘886 patent claims methods of analyzing batches of
enoxaparin based on the presence or absence of individual
component sugars of polysaccharides that are produced during the
manufacturing process.
The ‘466 patent claims a method of
isolating and categorizing tetrasaccharides (four-sugar chains).
Both methods allow manufacturers to determine whether a given
batch includes the individual sugar chains characteristic of
enoxaparin.
Momenta alleged that Teva infringed those patents
by making material preparations to sell a generic enoxaparin
product manufactured using the claimed methods.
In January, 2013, Teva moved for summary judgment of noninfringement of both patents.
Shortly thereafter, Momenta’s
counsel informed Teva’s counsel that Momenta was no longer
asserting the ‘466 patent against Teva.
Momenta claimed to
reserve the right to reassert the ‘466 patent as circumstances
developed.
It never moved under Fed. R. Civ. P. 15 to withdraw
its claims relating to the ‘466 patent.
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In July, 2013, the Court allowed Teva’s motion for summary
judgment with respect to the ‘886 patent and denied Momenta’s
motion to amend its infringement contentions.
Later, it
dismissed with prejudice the claims arising under the ‘466
patent when entering final judgment in Teva’s favor.
IV.
Teva’s Motion for Attorneys’ Fees
Teva moves under 35 U.S.C. § 285 for attorneys’ fees and
costs incurred in defending against Momenta’s infringement
claims.
Under that statute, district courts may award
reasonable attorneys’ fees to the prevailing party only in
“exceptional” cases.
An “exceptional” case is
simply one that stands out from the others with
respect to the substantive strength of a party’s
litigating position (considering both the governing
law and the facts of the case) or the unreasonable
manner in which the case was litigated. District
courts may determine whether a case is “exceptional”
in the case-by-case exercise of their discretion,
considering the totality of the circumstances.
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct.
1749, 1756 (2014).
Teva contends that this case is “exceptional” because
Momenta 1) never had an objective basis for filing the suit and
2) engaged in misconduct in securing the ‘886 patent by
improperly influencing an authoritative standard-setting
organization during its evaluation of an official method for
testing generic enoxaparin.
Finding this case not to be
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“exceptional,” the Court declines to exercise its discretion to
award attorneys’ fees.
First, the Court rejects Teva’s argument that Momenta
lacked an objective basis to file suit for infringement of the
‘886 patent or to continue litigating its claims through summary
judgment.
Teva suggests that Momenta knew that its theory was
flawed at the outset because Momenta received FDA approval to
market generic enoxaparin using a test method falling outside
the ‘886 patent’s claims.
The Court declines to draw that
inference because it was plausible at the outset that Teva used
the claimed methods, even if it was possible to use a noninfringing method.
Moreover, it was not unreasonable for
Momenta to continue litigating its claims under the ‘866 patent
after the Federal Circuit vacated the injunction entered in its
favor in a related case. See Momenta Pharms., Inc. v. Amphastar
Pharms., Inc., 686 F.3d 1348 (Fed. Cir. 2012).
The Federal
Circuit based its holding on § 271(e) of the Hatch-Waxman Act,
and therefore it was not unreasonable for Momenta to proceed
with its claims under § 271(g).
Similarly, while the Court
ruled in favor of Teva at summary judgment, it recognizes that
whether
§ 271(g) applies to Teva’s activities is a matter of
debate.
Similarly, Momenta acted reasonably in litigating its
claims with respect to the ‘466 patent.
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It was reasonable for
Momenta to file suit in the first place, as it knew that Teva’s
overseas manufacturer employed a process involving
tetrasaccharides, which feature prominently in the testing
methods claimed in the ‘466 patent.
Moreover, despite its
failure to move to amend its complaint, Momenta notified Teva
that it would no longer assert those claims shortly after
completing discovery.
Under the circumstances, Teva is not
entitled to fees with respect to the ‘466 patent.
Finally, the Court declines to award attorneys’ fees based
on Teva’s contention that Momenta engaged in misconduct in
securing the ‘886 patent by opposing the adoption of the United
States Pharmacopeia’s revised method for testing generic
enoxaparin.
The Court finds insufficient evidence that Momenta
acted in bad faith or that its conduct with respect to the
Pharmocopeia’s standard-setting process tainted the instant
litigation.
ORDER
For the foregoing reasons, Teva’s motion for attorneys’
fees (Docket No. 233) is DENIED.
So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated November 20, 2014
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