HORIZON PHARMA, INC. et al v. DR. REDDY'S LABORATORIES INC. et al

Filing 408

OPINION & ORDER that DRL's 393 Appeal of the Magistrate Judge's Order is DENIED; The Magistrate Judge's Text Order (D.E. 360) is AFFIRMED. Signed by Judge Stanley R. Chesler on 8/25/2021. (ams, )

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NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
_______________________________________
:
HORIZON MEDICINES LLC and NUVO
:
Civil Action No. 15-3324 (SRC)
PHARMACEUTICAL (IRELAND)
:
DESIGNATED ACTIVITY COMPANY,
:
:
OPINION & ORDER
Plaintiffs,
:
:
v.
:
:
DR. REDDY’S LABORATORIES, INC.
:
and DR. REDDY’S LABORATORIES,
:
:
Defendants.
:
_______________________________________:

CHESLER, U.S.D.J.
This matter comes before the Court on the on the appeal of Magistrate Judge Waldor’s
text order, entered April 21, 2021, by Defendants Dr. Reddy’s Laboratories, Inc. and Dr.
Reddy’s Laboratories, Ltd. (collectively, “DRL.”) Plaintiffs Horizon Medicines LLC and Nuvo
Pharmaceutical (Ireland) Designated Activity Company (collectively, “Horizon”) have opposed
the motion. For the reasons that follow, the motion will be denied.
DRL appeals the Magistrate Judge’s one-sentence text order, which stated: “DRL 3rd set
of interrogatories # 15-25, and #14 2d set of interrogatories the Court deems irrelevant and need
not be responded to.” DRL filed a motion for reconsideration, which was denied. DRL now
appeals the Magistrate Judge’s discovery ruling, arguing that the interrogatories at issue are
relevant:
DRL explained to Judge Waldor that its Interrogatories are relevant in light of the
Court’s summary judgment decision, because they are all designed to elicit
Plaintiffs’ position concerning the differences, if any, between the uncoated PPI

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in the Invalidated Claims and the esomeprazole layers recited in the Asserted
Claims . . .
(Defs.’ Br. 7.) DRL thus states that these interrogatories seek discovery of Horizon’s
contentions with regard to an issue of interest to DRL: the relationship of the patents at issue in
the Federal Circuit’s Nuvo decision and those patents at issue in the instant case. At summary
judgment, DRL made a collateral estoppel argument that this Court found wanting because DRL
failed to show identity of issues. (Opinion of February 17, 2021 at 3.) DRL now appears to
take the position that Horizon is obligated to provide discovery of its ideas about the identity of
issues between the cases.
In response, Horizon argues, inter alia, that the patentee claiming infringement bears no
burden of proof of validity in this case: the patents at issue are presumed valid, and it is the
accused infringer that bears the burden of establishing a prima facie invalidity case. DRL’s
collateral estoppel argument is certainly an element of its invalidity case. Horizon contends
that, in seeking the discovery at issue, DRL seeks to make Horizon prove the validity of the
patents at issue in light of Nuvo, and the Magistrate Judge did not abuse her discretion.
A Magistrate Judge’s non-dispositive order may be set aside if it is clearly erroneous or
contrary to law. 28 U.S.C. § 636(b)(1)(A). In this District, when “the magistrate has ruled on a
non dispositive matter such as a discovery motion, his or her ruling is entitled to great deference
and is reversible only for abuse of discretion.” Kresefsky v. Panasonic Communs. & Sys. Co.,
169 F.R.D. 54, 64 (D.N.J. 1996). The burden is on the party filing the appeal to demonstrate
that the standard for modifying or setting aside the magistrate judge's ruling has been met.
Cardona v. Gen. Motors Corp., 942 F. Supp. 968, 971 (D.N.J. 1996). Plaintiff has not
persuaded this Court that the order at issue is clearly erroneous or contrary to law, nor an abuse
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of discretion.
DRL has not carried its burden of demonstrating that the standard for reversing the
Magistrate Judge’s decision has been met. This Court agrees with Horizon that the Magistrate
Judge did not abuse her discretion. Moreover, the decision to deny these interrogatories as
irrelevant is correct. Horizon correctly observes that this Court, in its summary judgment
decision of February 17, 2021, held that DRL had failed to meet the movant’s summary
judgment burden of proof as to the collateral estoppel effect of the Nuvo decision. (Opinion of
February 17, 2021 at 5.) This Court agrees with the Horizon that these interrogatories have the
effect of shifting some of that burden onto Plaintiff. As this Court has already ruled, DRL must
first carry its initial burden of proof as to the collateral estoppel effect of the Nuvo decision, and
only after that will it be the time for Horizon to make its responsive case, or not, as it chooses.
In reply, DRL points to the Local Patent Rules that require disclosure of invalidity
contentions: those Rules require Horizon to disclose its response to DRL’s contention that the
patents at issue are invalid for failure to meet the written description requirement. This
argument misses the mark because DRL here seeks discovery of Horizon’s analysis of the
patents invalidated in Nuvo, which are not the same as the patents Horizon asserts in this case.
DRL does not argue that Horizon has failed to comply with its obligation to disclose its
responsive contentions to DRL’s invalidity contentions regarding the patents at issue and the
written description requirement. DRL has not demonstrated that the denied discovery requests
were legitimate and relevant under the Local Patent Rules. The Magistrate Judge correctly ruled
that DRL is not entitled to discovery of Plaintiff’s ideas about the identity of issues between this
case and Nuvo. If DRL wishes to argue preclusion based on Nuvo, it must do so without
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Horizon’s assistance.
DRL argues as well that this Court invited such discovery in its summary judgment
decision, which is incorrect. This Court held that DRL has not carried its initial summary
judgment burden and that, should DRL wish to try again, it must obtain the Court’s permission.
DRL’s appeal of Magistrate Judge Waldor’s text order, entered April 21, 2021, will be
denied, and the Magistrate Judge’s decision will be affirmed.
For these reasons,
IT IS on this 25th day of August, 2021
ORDERED that DRL’s appeal of the Magistrate Judge’s Order entered April 21, 2021
(Docket Entry No. 393) is DENIED; and it is further
ORDERED that the Magistrate Judge’s text Order entered April 21, 2021 (Docket Entry
No. 360) is hereby AFFIRMED.

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

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