RECKITT BENCKISER LLC v. DR. REDDYS LABORATORIES, INC. et al
Filing
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MEMORANDUM ORDER Denying without prejudice 15 Motion for Judgment on the Pleadings; this case shall be consolidated for all purposes under case # 15cv2155, etc. Signed by Judge Renee Marie Bumb on 1/15/16. (js)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
CAMDEN VICINAGE
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RECKITT BENCKISER LLC,
Plaintiff,
v.
AMNEAL PHARMACEUTICALS LLC,
Defendant.
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RECKITT BENCKISER LLC,
Plaintiff,
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Civ. No. 15-2155(RMB/JS)
Civ. No. 15-4524(RMB/JS)
MEMORANDUM ORDER
v.
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DR. REDDYS LABORATORIES, INC.,:
et al.,
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Defendants.
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This matter is before the Court on motions filed by (1)
Defendant Amneal Pharmaceuticals, LLC (“Amneal”) for Judgment on
the Pleadings [Docket No. 22] and (2) Defendants Dr. Reddys
Laboratories, Inc. (“Dr. Reddys”) for Judgment on the Pleadings
[Civil Action No. 15-4524, Docket No. 15] (Amneal and Dr. Reddys
collectively referred to as “Defendants”).
For the reasons set
forth herein, the motions are DENIED WITHOUT PREJUDICE.
Defendants bring their motions pursuant to Federal Rule of
Civil Procedure 12(c).
A[T]he difference between Rules 12(b)(6)
and 12(c) is purely procedural, as the same standards govern
both motions.@
Rinaldo v. Komar, 2007 U.S. Dist. LEXIS 2657 at
*6 (D.N.J. Jan 12, 2007) (citing Turbe v. Gov=t of the Virgin
Islands, 938 F.2d 427, 428 (3d Cir. 1991)).
A Rule 12(b)(6) motion to dismiss for failure to state a
claim upon which relief may be granted must be denied if the
plaintiff=s factual allegations are Aenough to raise a right to
relief above the speculative level, on the assumption that all
the allegations in the complaint are true, (even if doubtful in
fact).@
Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1965,
167 L. Ed. 2d 929 (2007)(internal citations omitted).
A
district court must accept any and all reasonable inferences
derived from those facts.
Unger v. Nat'l Residents Matching
Program, 928 F.2d 1392 (3d Cir. 1991); Glenside West Corp. v.
Exxon Co., U.S.A., 761 F. Supp. 1100, 1107 (D.N.J. 1991); Gutman
v. Howard Sav. Bank, 748 F. Supp. 254, 260 (D.N.J. 1990).
Further, the court must view all allegations in the Complaint in
the light most favorable to the plaintiff. See Scheuer v.
Rhodes, 416 U.S. 232, 236, 94 S. Ct. 1683, 40 L. Ed. 2d 90
(1974); Jordan v. Fox, Rothschild, O'Brien & Frankel, 20 F.3d
1250, 1261 (3d Cir. 1994).
Plaintiff Reckitt Benckiser, LLC (“Plaintiff” or “Reckitt”)
alleges that Defendants’ quaifenesin sustained-release tablets
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(generic versions of Plaintiff’s Mucinex® products) infringe its
patents, specifically, Patent No. 6,372,252 (“‘252 Patent”),
Patent No. 6,955,821 (“‘821 Patent”), and Patent No. 7,838,032
(“‘032 Patent”) (collectively “the Patents”).
The ‘032 Patent
and ‘821 Patent are continuations-in-part of the ‘252 Patent.
In relevant part, the ‘252 Patent claims a drug product
comprising two structural portions of quaifenesin, the first
portion containing an immediate release portion of quaifenesin
and the second portion containing a sustained-release portion of
quaifenesin.
In a prior case involving the ‘252 Patent, the
Federal Circuit affirmed the construction of portion to mean a
“discrete part of the product.”
See Reckitt Benckiser v. Watson
Labs, Inc., 430 Fed. Appx. 871 (Fed. Cir. 2011).
addressed and followed the same construction.
Another court
Adams Respiratory
Therapeutics, Inc. v. Perrigo, 2012 WL 90188 (W.D. Mich. 2012).
Defendants contend that their products do not infringe the
Patents because they are non-layered, single-matrix sustainedrelease tablets that were disclaimed during prosecution of the
‘252 patent.
Because these products do not contain two portions
as construed by the Federal Circuit, they contend, there can be
no finding of infringement as to the ‘252 Patent.
As to the
‘821 and ‘032 Patents, Defendants contend that there are no
disclosures rescinding the sustained-release single formulation
disclaimer made during the ‘252 Patent’s prosecution.
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Reckitt responds that Defendants’ motions should be denied
because discovery is needed to resolve various material facts.
First, Plaintiff avers that it should be entitled to discovery
as to the actual structure of the finished products.
The Court
agrees with Reckitt, but issues a strong, cautionary
instruction.
Clearly, the ANDAs filed by Defendants are within
the scope of a Rule 12(c) motion.
However, although the ANDA
excerpts appear to support Defendants’ position, Plaintiff
should be entitled to limited discovery regarding the actual
structure of the finished products.
Because evidence of the
structure of Defendants’ products falls outside the pleadings,
the motions are therefore denied.
Discovery regarding the
structure of Defendants’ products, however, should not be
extensive.
The Court sees no reason why this discovery cannot
be accomplished expeditiously without protracted litigation.
The parties are directed to meet and confer and present a
proposed discovery schedule to the Honorable Joel Schneider,
United States Magistrate Judge.
As for the remaining two patents, the ‘821 Patent and ‘032
Patent, the material issue is whether or not Plaintiff rescinded
its prior disclaimer of single formulation sustained-release
tablets.
Both sides have culled out from the prosecution
history of the ‘252 Patent the excerpts they believe support
their positions.
Under certain circumstances, the prosecution
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history may properly be the subject of a Rule 12(c) motion.
Here, however, asking the Court to review only parts of the
prosecution history deprives this Court of the ability to
determine whether Plaintiff reaffirmed or rescinded the
disclaimer.
Again, although the excerpts cited by Defendants
appear to support Defendants’ position, this issue cannot be
decided on a Rule 12(c) motion, but only after the issue has
been fully developed.
As such, the Court will entertain
dispositive motions on this issue.
At this juncture, beyond the
prosecution history documents, there appears to be no need for
discovery.
In that regard, Plaintiff’s request for a Markman
hearing is premature.
Accordingly, for the foregoing reasons,
IT IS ON THIS 15th day of January 2016, ORDERED that he
motions are denied without prejudice.
Upon completion of the
limited discovery, as described above, the parties may file
dispositive motions.
Thereafter, the Court will conduct a
hearing where (1) it will decide the issue of infringement as to
the ‘252 Patent; (2) the parties will lay out the prosecution
history of the ‘032 and ‘821 Patents so that the Court may
resolve the issue of disclaimer rescission; and
IT IS FURTHER ORDERED that this Court sua sponte finds that
the above-captioned matters involve common questions of law and
fact and, therefore, the above-captioned matters shall be
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consolidated pursuant to Federal Rule of Civil procedure 42(a),
that Reckitt Benckiser LLC v. Amneal Pharmaceuticals LLC, Civil
Action No. 15-2155 (RMB/JS), and Reckitt Benckiser LLC v. Dr.
Reddys Laboratories, Inc., et al, Civil Action No. 15-4524
(RMB/JS), and are hereby consolidated for all purposes, subject
to de-consolidation if warranted, and that Reckitt Benckiser LLC
v. Amneal Pharmaceuticals LLC, Civil Action No. 15-2155
(RMB/JS), shall be designated the “Lead Case”; and
IT IS FURTHER ORDERED that all future filings in the
consolidated matters shall be filed under the docket of the Lead
Case; and
IT IS FURTHER ORDERED that the Clerk of the Court shall
docket this Order in each of the two individual actions; and
IT IS FURTHER ORDERED that the Clerk of the Court shall
administratively terminate Reckitt Benckiser v. Dr. Reddys
Laboratories, Inc., et al, Civil Action No. 15-4524 (RMB/JS);
and
IT IS FURTHER ORDERED that the Clerk of the Court shall
identify on the docket of each individual action the Lead Case
and the member case; and
IT IS FURTHER ORDERED that the parties shall appear, in
person, before the Honorable Joel Schneider, United States
Magistrate Judge, on January 21, 2016, at 11:30 a.m., in
Courtroom 3B, at the Mitchell H. Cohen Federal Courthouse, 4th
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and Cooper Streets, Camden, New Jersey.
s/Renée Marie Bumb
RENÉE MARIE BUMB
United States District Judge
Dated: January 15, 2016
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