Ferring B.V. v. Watson Pharmaceuticals, Inc. et al

Filing 559

ORDER denying 531 and 555 Bills of Costs. Signed by Judge Robert C. Jones on 12/30/2014. (Copies have been distributed pursuant to the NEF - KR)

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UNITED STATES DISTRICT COURT
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DISTRICT OF NEVADA
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FERRING B.V.,

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Plaintiff,
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vs.
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WATSON LABORATORIES, INC. - (FL) et al., )
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Defendants.
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FERRING B.V.,
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Plaintiff,
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vs.
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APOTEX, INC. et al.,
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Defendants.
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FERRING B.V.,
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Plaintiff,
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vs.
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WATSON PHARMACEUTICALS, INC. et al., )
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Defendants.
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FERRING B.V.,
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Plaintiff,
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vs.
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APOTEX, INC. et al.,
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Defendants.
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3:11-cv-00481-RCJ-VPC
ORDER

3:11-cv-00485-RCJ-VPC
ORDER

3:11-cv-00853-RCJ-VPC
ORDER

3:11-cv-00854-RCJ-VPC
ORDER

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These consolidated cases arise out of Defendants’ application with the Food and Drug

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Administration (“FDA”) to manufacture and sell generic versions of a patented drug. Pending

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before the Court are the parties’ respective Bills of Costs (ECF Nos. 531, 555).

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I.

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FACTS AND PROCEDURAL HISTORY
These cases arise out of the alleged infringement of Plaintiff Ferring B.V.’s (“Ferring”)

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U.S. Patent No. 7,947,739 for tranexamic acid tablets sold under the trademark Lysteda® (the

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“‘739 Patent” or “Tablet Patent”), (see Compl. ¶¶ 13–17, July 7, 2011, ECF No. 1; Compl. ¶¶

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9–13, July 8, 2011, ECF No. 1 in Case No. 3:11-cv-00485), and the alleged infringement of

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Ferring’s U.S. Patent No. 8,022,106 for tranexamic acid formulations and methods of treating

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menorrhagia therewith (the “‘106 Patent” or “Formulas and Treatment Patent”), (see Compl. ¶¶

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13–17, Nov. 25, 2011, ECF No. 1 in Case No. 3:11-cv-00853; Compl. ¶¶ 9–13, Nov. 25, 2011,

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ECF No. 1 in Case No. 3:11-cv-00854).1 In the ‘481 and ‘485 Cases, respectively, Ferring sued

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several Watson Labs entities (collectively, “Watson Defendants”) and several Apotex entities

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(collectively, “Apotex Defendants”) in this Court for infringing the ‘739 Patent. In the ‘853 and

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‘854 Cases, respectively, Ferring sued several Watson Defendants and several Apotex

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Defendants in this Court for infringing the ‘106 Patent.

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The Court consolidated the four cases, with the ‘481 Case as the lead case. It also granted

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motions to dismiss the counterclaims for invalidity and to strike affirmative defenses for

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invalidity in the ‘481 and ‘854 Cases, with leave to amend. The Court ruled that affirmative

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defenses must specify a distinct legal theory of invalidity under Rule 8(c) but need not be pled

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according to the Iqbal plausibility standard, as the counterclaims must be under Rule 8(a).

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Watson Defendants and Apotex Defendants amended their answers and counterclaims,

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accordingly. (See ECF Nos. 93, 94). Apotex Defendants later further amended their answer and

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Unless otherwise noted, the docket numbers in this document refer to Case No. 3:11-cv-

00481.
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counterclaim. The Court denied motions to dismiss the amended counterclaims for invalidity.

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The Court held a Markman hearing and issued a claim construction order. The Court held a

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bench trial and gave its findings of fact and conclusions of law from the bench. The Court

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entered judgment in favor of Plaintiff on its claims of infringement against Watson Defendants

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and against Watson Defendants on their counterclaims of invalidity. The Court of Appeals

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reversed as to the infringement claims but affirmed as to the invalidity counterclaims. Both

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parties have asked the Court for costs.

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II.

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LEGAL STANDARDS
“Unless a federal statute, these rules, or a court order provides otherwise, costs—other

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than attorney’s fees—should be allowed to the prevailing party.” Fed. R. Civ. P. 54(d)(1). Where

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both parties have prevailed in part, the district court may require that they bear their own costs.

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See Amarel v. Connell, 102 F.3d 1494, 1523 (9th Cir. 1996) (“In the event of a mixed judgment,

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however, it is within the discretion of a district court to require each party to bear its own

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costs.”); Brunswick-Balke-Collender Co. v. Am. Bowling & Billiard Corp., 150 F.2d 69, 74 (2d

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Cir. 1945) (“The court below denied costs to either side. On appeal, Brunswick has prevailed on

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the Clayton Act and trademark issues; American has prevailed on the question of the validity of

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the patent. We think it appropriate, therefore, that neither side be awarded the costs of the appeal

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and that the district judge’s decision as to costs in the court below be affirmed.”).

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III.

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ANALYSIS
Plaintiff asks for over $365,000 in costs, and Watson Defendants ask for over $277,000.

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The Court adopts Plaintiff’s alternative argument that this is a mixed-judgment case where the

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parties should bear their own costs. Watson Defendants prevailed against the infringement

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claims (although they amended their ANDA in the course of litigation, such that Plaintiff did

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achieve some small measure of success through its infringement claims), and Plaintiff prevailed

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against the invalidity counterclaims. Both victories were significant. Watson Defendants’ loss
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on Plaintiff’s infringement claims would have resulted in significant monetary damages and an

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injunction preventing future sales, and Plaintiff’s loss on Watson Defendants’ invalidity

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counterclaims would have resulted in increased competition against Plaintiff’s patented products

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by Watson Defendants and others, resulting in lost sales and reduced prices as to its remaining

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market share. The Court in its discretion will award costs to neither party.

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CONCLUSION

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IT IS HEREBY ORDERED that the Bills of Costs (ECF Nos. 531, 555) are DENIED.

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IT IS SO ORDERED.

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Dated this 30th day December, 2014.
Dated this 15th day of of December, 2014.

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_____________________________________
ROBERT C. JONES
United States District Judge

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