Roxane Laboratories, Inc. v. Camber Pharmaceuticals, Inc. et al

Filing 231

OPINION & ORDER denying 193 Motion for Summary Judgment of No Inequitable Conduct. Signed by Judge Stanley R. Chesler on 8/6/15. (cm )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
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ROXANE LABORATORIES, INC.,
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Plaintiff,
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v.
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CAMBER PHARMACEUTICALS INC.
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et al.,
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Defendants.
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____________________________________:

Civil Action No. 14-4042 (SRC)

OPINION & ORDER

CHESLER, U.S.D.J.
This matter comes before the Court on the motion for summary judgment of no
inequitable conduct, pursuant to Federal Rule of Civil Procedure 56, by Plaintiff Roxane
Laboratories, Inc. (“Roxane”). For the reasons stated below, the motion will be denied.
The Amended Answer filed by Defendants Camber Pharmaceuticals Inc. and Invagen
Pharmaceuticals Inc. (collectively, “Defendants”) asserts as an affirmative defense that the ’032
patent is unenforceable due to inequitable conduct. (Am. Answer, affirm. defenses ¶ 3.) The
Amended Answer also asserts a counterclaim seeking a declaratory judgment that the ’032
patent is unenforceable due to inequitable conduct. (Am. Answer, counterclaim III.) Both the
affirmative defense and the counterclaim rely on the allegation that applicant “Dr. Uraizee made
material misrepresentations and misleading statements with the intent to deceive the USPTO into
granting a patent.” (Am. Answer, affirm. defenses ¶ 3.) Plaintiff now seeks summary judgment
that Defendants cannot prove the alleged inequitable conduct.
This motion must be denied because it is premature. Fact discovery has not been

completed, but it is already clear that there will be a battle of the experts on this issue;1 the
parties have not yet had the opportunity to depose the experts. Crucially, Dr. Uraizee has not yet
been deposed. This motion cannot be decided before this essential evidence has been developed.
In reply, Plaintiff argues that, inter alia, Defendants have failed to show how the
deposition of Dr. Uraizee is essential to justify their opposition. This is not persuasive. “The
substantive elements of inequitable conduct are: (1) an individual associated with the filing and
prosecution of a patent application made an affirmative misrepresentation of a material fact,
failed to disclose material information, or submitted false material information; and (2) the
individual did so with a specific intent to deceive the PTO.” Exergen Corp. v. Wal-Mart Stores,
Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). Given that questions of Dr. Uraizee’s specific
intent are essential to the issue of inequitable conduct, the opportunity to question her is crucial
to developing the facts to support or oppose judgment.
“The court must give a party opposing summary judgment an adequate opportunity to
obtain discovery.” Radich v. Goode, 886 F.2d 1391, 1393 (3d Cir. 1989). Federal Rule of Civil
Procedure 56(d) states:
When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by
affidavit or declaration that, for specified reasons, it cannot present facts essential
to justify its opposition, the court may:
(1) defer considering the motion or deny it;
(2) allow time to obtain affidavits or declarations or to take discovery; or
(3) issue any other appropriate order.
Defendants have shown that they have not had an adequate opportunity to obtain discovery, and

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In arguing for summary judgment, Plaintiff relies on the declaration of its expert, Dr.
McConville, as evidence that Dr. Uraizee’s statements were not false. Defendants have not yet
had an opportunity to question Dr. McConville.
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that, given the current early stage of discovery, they cannot now present facts essential to justify
their opposition of the motion for summary judgment. Pursuant to Federal Rule of Civil
Procedure 56(d), the motion for summary judgment will be denied without prejudice, and may
be renewed after the close of discovery.
For these reasons,
IT IS on this 6th day of August, 2015 hereby
ORDERED that Plaintiff’s motion for summary judgment of no inequitable conduct
(Docket Entry No. 193) is DENIED without prejudice.

s/ Stanley R. Chesler
Stanley R. Chesler, U.S.D.J.

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