Momenta Pharmaceuticals, Inc. et al v. Amphastar Pharmaceuticals, Inc. et al

Filing 584

Judge Nathaniel M. Gorton: ORDER entered. MEMORANDUM AND ORDER: "For the foregoing reasons, the defendants' motion for entry of final judgment (Docket No. 507 ) is, to the extent of entry of judgment at this juncture, ALLOWED, but otherwise DENIED. So ordered."(Moore, Kellyann)

United States District Court
District of Massachusetts
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)
)
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Plaintiffs,
)
)
v.
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AMPHASTAR PHARMACEUTICALS, INC., )
INTERNATIONAL MEDICATION
)
SYSTEMS, LTD., ACTAVIS, INC. AND )
WATSON PHARMA, INC.,
)
)
Defendants.
)
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MOMENTA PHARMACEUTICALS, INC.
AND SANDOZ INC.,

Civil Action No.
11-11681-NMG

MEMORANDUM AND ORDER
GORTON, J.
The instant dispute arises out of a patent infringement
suit filed by plaintiffs Momenta Pharmaceuticals, Inc. and
Sandoz Inc. (collectively, and for simplicity, “Momenta”)
against defendants Amphastar Pharmaceuticals, Inc.,
International Medication Systems, Ltd., Actavis, Inc. and Watson
Pharma, Inc. (collectively, and for simplicity “Amphastar”).
The Court entered summary judgment in favor of defendants in
July, 2013, and will now proceed to enter final judgment.
I.

Procedural background
Plaintiffs’ original complaint, which was filed in

September, 2011, alleged multiple claims of infringement with
respect to U.S. Patent No. 7,575,886 (“the ‘886 patent”) and
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U.S. Patent No. 7,790,466 (“the ‘466 patent”) (Docket No. 1).
Plaintiffs amended the complaint as a matter of right in
October, 2011 but did not alter their substantive allegations
(Docket No. 63).
Defendants moved to dismiss the amended complaint in
November, 2011 (Docket No. 100) and this Court denied that
motion in January, 2012 (Docket No. 140).

Defendants filed

their answer in February, 2012 after the Court denied their
motion to dismiss (Docket No. 149) and filed an amended answer
in May, 2012 (Docket No. 208).
Defendants moved for summary judgment in January, 2013
(Docket No. 346).

After the Court extended filing deadlines to

allow for discovery (Docket Nos. 388, 431), plaintiffs informed
defendants on May 24, 2013 that
At this time, based on documents produced in April,
2013, Plaintiffs withdraw their contention that the
Defendants infringe U.S. Patent No. 7,790,466.
Plaintiffs reserve the right to reassert the ‘466
patent as circumstances develop.
In their opposition to defendants’ motion for summary judgment
filed one week later (Docket No. 450), plaintiffs stated the
following in a footnote:
Discovery ordered by the Court in April 2013 appears
to show that, contrary to the statements contained in
previously-produced Amphastar documents, Amphastar has
not used the process claimed in U.S. Patent No.
7,790,466 as part of its commercial manufacturing
process. Accordingly, that claim is withdrawn.

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Plaintiffs did not, however, file a formal motion to amend their
pleadings under Fed. R. Civ. P. 15 or seek leave of the Court to
dismiss those claims under Fed. R. Civ. P. 41(a).
In their reply brief, defendants noted that plaintiffs had
not filed a motion to withdraw under Fed. R. Civ. P. 41(a)(2)
and were refusing to dismiss their claims under the ‘466 patent
with prejudice (Docket No. 464).

Defendants asserted that

As Momenta’s claims have not been withdrawn with
prejudice and in light of Amphastar’s declaratory
judgment counterclaim of non-infringement of the ‘466
patent, the Court should grant Amphastar’s motion [for
declaratory judgment of non-infringement] in view of
Momenta’s non-opposition.
In July, 2013, the Court allowed defendants’ motion for
summary judgment with respect to the ‘886 patent and denied
plaintiffs’ motion to amend their infringement contentions on
the grounds that such an amendment would be futile (Docket No.
497).

It explained that it would address plaintiffs’ claims

only with respect to the ‘886 patent because plaintiffs had
indicated in their opposition that they were withdrawing their
claims with respect to the ‘466 patent.

The Court found that 1)

the accused testing, if conducted, fell under the 35 U.S.C. §
271(e) safe harbor and 2) the accused testing, if conducted, did
not infringe under 35 U.S.C. § 271(g).
Following that ruling, plaintiffs filed an opposed motion
in July, 2013 to request final resolution of a pending motion

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for sanctions prior to entry of judgment (Docket No. 498).
Plaintiffs also filed a notice of appeal of the Court’s rulings
on defendants’ motion for summary judgment and plaintiffs’
motion to amend in August, 2013 (Docket No. 500).

Defendants

moved in October, 2013 for entry of judgment (Docket No. 507),
shortly before the Court of Appeals for the Federal Circuit
dismissed plaintiffs’ appeal for lack of jurisdiction due to the
fact that final judgment had not been entered in this case
(Docket No. 510).
In a December, 2013 Memorandum and Order, Magistrate Judge
Robert Collings found that defendants had disobeyed court orders
during discovery and that such misconduct warranted sanctions.
He ruled that sanctions would be limited to the attorneys’ fees
and costs incurred by plaintiffs in litigating the discovery
dispute (Docket No. 517).

This Court subsequently overruled

defendants’ objections to that order and found that sanctions
were indeed warranted (Docket No. 582).
II.

Defendants’ motion for entry of final judgment
Final judgment is warranted because the determination of

attorneys’ fees and costs is a collateral issue unrelated to the
issues on appeal. Cf. Ray Haluch Gravel Co. v. Cent. Pension
Fund of the Int’l Union of Operating Eng’rs & Participating
Emp’rs, No. 12-992, slip op. at 1 (U.S. Jan. 15, 2014) (holding
that, in general, a pending ruling on attorneys’ fees and costs
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does not prevent a merits judgment from becoming final for
purposes of appeal).
The parties agree that the Court may enter final judgment
at this juncture but disagree about the form it should take.
They specifically disagree about the posture of plaintiffs’
claims with respect to the ‘466 patent.

Defendants argue that

those claims should be dismissed with prejudice.

Plaintiffs

contend that the Court should either dismiss the claims without
prejudice or dismiss with prejudice any claim for infringement
of the ‘466 patent based solely on the defendants’ Abbreviated
New Drug Application (“ANDA”) as it existed in January, 2013.
A.

Legal standard

Courts in this district construe motions to withdraw some
but not all of the claims against a particular defendant as
motions to amend pleadings under Fed. R. Civ. P. 15 rather than
motions to dismiss voluntarily under Fed. R. Civ. P. 41(a). See,
e.g., Schwartz v. CACH, LLC, No. 13-12644, 2013 WL 6152343, at
*3 (D. Mass. Nov. 21, 2013) (internal citations omitted);
Transwitch Corp. v. Galazar Networks, Inc., 377 F. Supp. 2d 284,
288-89 (D. Mass. 2005) (collecting cases).
Fed. R. Civ. P. 15 provides that a party may amend its
pleading with leave of court, which should be freely given “when
justice so requires”. Fed. R. Civ. P. 15(a)(2).

The decision to

allow or deny a motion to amend is within the discretion of the
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district court. Zenith Radio Corp. v. Hazeltine Research, Inc.,
401 U.S. 321, 330 (1971).

Nevertheless, leave ought to be given

unless there is a good reason to deny it. Foman v. Davis, 371
U.S. 178, 182 (1962).

Reasons to deny leave to amend include

undue delay, bad faith or dilatory motive on the part
of the movant, repeated failure to cure deficiencies
by amendments previously allowed, undue prejudice to
the opposing party by virtue of allowance of the
amendment, futility of amendment, etc.
Id.
A party that seeks to amend its complaint when
“considerable time” has elapsed between the filing of its
complaint and its motion to amend must show a “valid reason” for
its delay. Acosta-Mestra v. Hilton Int’l of P.R., Inc., 156 F.3d
49, 52 (1st Cir. 1998).
If a court allows a motion to amend a pleading by
dismissing certain claims, the remaining issue is whether those
claims are dismissed with or without prejudice. Cf. Charles Alan
Wright & Arthur R. Miller, 6 Federal Practice and Procedure §
1486 (3d ed. 2010) (explaining that courts that allow leave to
amend pursuant to Fed. R. Civ. P. 15(a) may impose conditions
such as dismissing claims with prejudice).

In this respect,

courts apply the same standard as that applied to the voluntary
dismissal of all claims against a defendant pursuant to Fed. R.
Civ. P. 41(a). See Greene v. Ab Coaster Holdings, Inc., No. 1038, 2012 WL 2342927, at *7 (S.D. Ohio June 20, 2012); Eastman
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Mach. Co. v. Diamond Needle Corp., No. 99-0450, 2000 WL 1887827,
at *1 (W.D.N.Y. Dec. 18, 2000).
The First Circuit Court of Appeals has held that a court
faced with a motion to dismiss under Fed. R. Civ. P. 41(a)
should dismiss without prejudice unless the defendant will
suffer legal prejudice as a result. Colon-Cabrera v. Esso
Standard Oil Co., 723 F.3d 82, 87 (1st Cir. 2013) (citing P.R.
Mar. Shipping Auth. v. Leith, 668 F.2d 46, 50 (1st Cir. 1981)).
Factors that may justify dismissing with prejudice include
the defendant’s effort and expense of preparation for
trial, excessive delay and the lack of diligence on
the part of the plaintiff in prosecuting the action,
insufficient explanation of the need to take a
dismissal, and the fact that a motion for summary
judgment has been filed by the defendant.
Doe v. Urohealth Sys., Inc., 216 F.3d 157, 160 (1st Cir. 2000)
(quoting Pace v. S. Express Co., 409 F.2d 331, 334 (7th Cir.
1969)).

The Court may also consider whether plaintiffs sought

to “circumvent an expected adverse result” in dismissing the
‘466 claims. Am. Sci. & Eng’g, Inc. v. Kelly, No. 99-10365, 2000
WL 307462, at (D. Mass. Mar. 16, 2000) (citations omitted).

The

prospect of a second suit or of the plaintiff gaining a tactical
advantage in the current suit does not, however, justify
dismissing with prejudice. Leith, 668 F.2d at 50.

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B.

Application

As an initial matter, the Court finds that plaintiffs
properly amended their complaint under Fed. R. Civ. P. 15(a),
despite the fact that they informed the Court that they were
withdrawing certain claims more than one year after the April,
2012 deadline for amending pleadings (Docket Nos. 139, 450).
That delay was justified because defendants delayed producing
testing records that plaintiffs needed to prove or disprove
their infringement theories with respect to the ‘466 patent. See
Foman, 371 U.S. at 182; Acosta-Mestra, 156 F.3d at 52.
The remaining issue is whether plaintiffs’ claims with
respect to the ‘466 patent should be dismissed with or without
prejudice when the Court enters final judgment.

Notwithstanding

the fact that defendants may have incurred significant expense
in preparing their defense of the ‘466 patent claims, the Court
will dismiss plaintiffs’ claims without prejudice.

Unlike the

situation in the related Teva action, plaintiffs have a valid
excuse for their delay in withdrawing their claims under the
‘466 patent. See Urohealth, 216 F.3d at 160.

Plaintiffs advised

the Court that discovery provided pursuant to an April, 2013
order of Magistrate Judge Collings revealed that, contrary to
statements in previously-produced documents, defendants had not
used the process claimed by the ‘466 patent in its commercial
manufacturing process.

Based upon that discovery, plaintiffs
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notified defendants and the Court a month or so later that they
were withdrawing their claims with respect to the ‘466 patent.
As a result, the Court finds that plaintiffs did not engage
in undue delay and were reasonably diligent despite the fact
that they withdrew their claims after defendants filed their
motion for summary judgment. See id.

Moreover, it would be

inequitable in this case to dismiss plaintiffs’ claims with
prejudice simply because they were withdrawn after defendants
filed their motion for summary judgment considering that the
reasons for the delay were largely within defendants’ control.
ORDER
For the foregoing reasons, the defendants’ motion for entry
of final judgment (Docket No. 507) is, to the extent of entry of
judgment at this juncture, ALLOWED, but otherwise DENIED.
So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated January 24, 2014

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