Ferring B.V. v. Apotex, Inc. et al

Filing 41

ORDERED that the # 313 Motion to Amend is GRANTED. FURTHER ORD that the # 321 Motion to Amend is DENIED. FURTHER ORD that the Motions to Seal (## 312 , 322 , 327 ) are GRANTED.(Referenced doc. nos. filed in base case 3:11-cv-00481) Signed by Chief Judge Robert C. Jones on 5/28/2013. (Copies have been distributed pursuant to the NEF - DRM)

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

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

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Pending before the Court are several Defendants’ Motion to Amend Invalidity and

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Unenforceability Contentions (ECF No. 313), as well as Plaintiff’s Motion to Amend

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Infringement Contentions (ECF No. 321).

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I.

FACTS AND PROCEDURAL HISTORY

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

00481.
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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 its answer and

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

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

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II.

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LEGAL STANDARDS
Local Rules 16.1-1 to 16.1-21 contain special discovery rules applicable to patent cases

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under this District’s Patent Pilot Program. Local Rule 16.1-6 mandates disclosure of a patent

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plaintiff’s “Asserted Claims and Infringement Contentions” within fourteen days after the Rule

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26(f) scheduling conference, and Local Rule 16.1-8 mandates disclosure of a patent defendant’s

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“Non-infringement, Invalidity, and Unenforceability Contentions” within forty-five days

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thereafter. Local Rule 16.1-12 permits amendments to either of these disclosures for good cause

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and absent undue prejudice to the opposing party. Non-exhaustive examples of good cause are:

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claim constructions by the Court differing from that proposed by the party seeking amendment;

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recent discovery of material prior art despite earlier diligent search; and recent discovery of

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nonpublic information about the accused instrumentality despite earlier diligent search.

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III.

ANALYSIS

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Defendants have asked to amend their invalidity and unenforceability contentions because

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the Court, in February 2013, construed the claims differently from the way Defendants proposed.

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The Court grants the motion. Plaintiff objects that the amendment is based upon prior art that

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Defendants have long been aware of, but the discovery of prior art of which a party was not

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previously aware is only one way to show good cause. Claim construction different from a

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party’s proposal is also given as an example of good cause.

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Plaintiff has likewise moved to amend its infringement contentions based upon the recent

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discovery of nonpublic information about the accused instrumentality. Watson Defendants

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object that the amendment to add a theory under the doctrine of equivalents is a completely new
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theory of infringement.2 Watson Defendants argue that Plaintiff has discovered no new

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information that would make the theory viable now in a way that it was not viable before.

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Watson Defendants note that Plaintiff relies upon Watson’s new batch records, which are of

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course “new” because batches of the allegedly infringing product are continuously produced, but

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which are not materially different from Defendants’ old batch records, to which Plaintiff has long

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had access, in such a way as to support good cause for bringing a new theory of infringement.

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The Court agrees with Defendants and therefore denies the motion.

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However, the Court tends to agree with Plaintiff that the doctrine-of-equivalents theory is
not a new claim that need even be added by amendment to either the Complaint or the

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contentions. It is simply an alternate way to prove the infringement claims that have already

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been pled and described in the Complaint and contentions. It is as if a Title VII defendant were

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to argue that the plaintiff cannot argue the “cat’s paw” theory to the jury because that legal theory

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was not specifically identified in the complaint. So long as the claim is sufficiently pled, the

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defendant is liable to defend against the claim under any theory supporting it, unless the

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defendant moves for and obtains partial dismissal or summary judgment as against a particular

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theory. Neither Rule 8(a) nor Local Rule 16.1-8 requires a plaintiff to plead every piece of case

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law that may support the defendant’s liability. So long as the statutory or common law cause of

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action is identified and facts are alleged making a violation plausible, a defendant requires no

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additional notice as to the plaintiff’s theory of the case. Like the doctrine of negligence per se,

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the doctrine of equivalents is not a separately cognizable cause of action that need be (or can be)

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separately pled, but a legal theory that may aid a plaintiff in proving his claim. The Court denies

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the present motion because there is neither good cause nor need to amend. Plaintiff may argue

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the doctrine of equivalents without adding any new claim.

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The Apotex Defendants have apparently agreed with Ferring that each side may amend
its contentions.
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CONCLUSION

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IT IS HEREBY ORDERED that the Motion to Amend (ECF No. 313) is GRANTED.

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IT IS HEREBY ORDERED that the Motion to Amend (ECF No. 321) is DENIED.

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IT IS FURTHER ORDERED that the Motions to Seal (ECF Nos. 312, 322, 327) are

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GRANTED.

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IT IS SO ORDERED.

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Dated this 6th daydayMay, 2013.
Dated this 28th of of May, 2013.

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_____________________________________
ROBERT C. JONES
United States District Judge

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