HOSPIRA, INC. et al v. SANDOZ INTERNATIONAL GmbH et al
Filing
415
MEMORANDUM OPINION filed. Signed by Judge Mary L. Cooper on 2/27/2014. (kas, )
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
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HOSPIRA, INC., et al.,
Plaintiffs,
v.
SANDOZ INC., et al.,
Defendants.
CIVIL ACTION NO. 09-4591 (MLC)
MEMORANDUM OPINION
THE PARTIES to this action jointly move pursuant to Federal
Rule of Civil Procedure (“Rule”) 60(b) to vacate the parts of
this Court’s opinion, and order and judgment, that declared a
certain pharmaceutical patent to be invalid (“Motion to Vacate”).
(See dkt. entry no. 404, Joint Notice of Mot.)
A nonparty to
this action, Caraco Pharmaceutical Laboratories, Ltd. (“CPL”)
cross-moves to permissibly intervene in this action pursuant to
Rule 24(b), or alternatively for leave to file a brief as amicus
curiae, in order to oppose the Motion to Vacate (“Cross Motion”).
(See dkt. entry no. 410, CPL Notice of Cross Mot.)
For the
following reasons, the Court will grant the Motion to Vacate and
deny the Cross Motion.
PLAINTIFFS, Hospira, Inc. and Orion Corporation, brought
this action against Defendants, Sandoz Inc. and Sandoz Canada
Inc., on September 4, 2009, alleging, inter alia, that Defendants
infringed United States Patent No. 6,716,867 (“the ’867 Patent”).
(See dkt. entry no. 1, Compl.)
A review of this Court’s docket
reveals that the dispute was actively litigated for 32 months
until May 4, 2012, when this Court issued an opinion (“May 2012
Opinion”) and an order and judgment (“May 2012 Judgment”), inter
alia, finding in Defendants’ favor that the ’867 Patent was
invalid.
(See dkt. entry no. 381, 5-4-12 Am. J.; see also dkt.
entry no. 380, 5-4-12 Am. Mem. Op.)
Plaintiffs and Defendants
separately appealed to the United States Court of Appeals for the
Federal Circuit (“Federal Circuit”) from the May 2012 Judgment.
(See dkt. entry no. 385, Defs. Notice of Appeal; dkt. entry no.
386, Pls. Notice of Cross Appeal.)1
WHILE the entire dispute remained pending in the Federal
Circuit, the parties (1) notified this Court on December 6, 2013,
that the dispute insofar as it concerned the ’867 Patent had been
tentatively settled, and (2) sought an indicative ruling pursuant
to Rule 62.1 that this Court would agree to vacate the parts of
the May 2012 Opinion and the May 2012 Judgment concerning the
’867 Patent as part of the settlement if the Federal Circuit
1
This action concerns an Abbreviated New Drug Application.
This Court will not list every claim construction brief,
dispositive motion, supporting brief, conference, oral argument,
and court proceeding in order to demonstrate that this type of
action entails vigorous prosecution and defense. That this
Court’s docket for the action contains over 400 entries is
illustrative. This Court assumes that CPL, even though it is a
nonparty, is well-aware of the expense and effort incurred by
Plaintiffs and Defendants here, as well as the expense and effort
that would be incurred on appeal in the Federal Circuit.
2
remanded the action.
(See dkt. entry no. 400, Notice of Mot.)
On December 16, 2013, this Court advised the parties that it
would indeed so vacate upon the Federal Circuit’s remand.
(See
dkt. entry no. 402, 12-16-13 Order.)
BY AN ORDER dated December 23, 2013 (“12-23-13 Federal
Circuit Order”), the Federal Circuit remanded “for the limited
purpose of the district court’s consideration of the parties’
motion for vacatur”, but stated that it “retain[ed] jurisdiction
so that any of the parties may seek appellate review” and that
“[t]he appeals are held in abeyance pending the resolution of the
motion for vacatur by the district court”.
(See dkt. entry no.
410-7, 12-23-13 Fed. Cir. Order at 2.)
THE PARTIES jointly filed the Motion to Vacate on the same
day that the 12-23-13 Federal Circuit Order was issued, arguing
that:
the parties have independently reached a mutually agreed
settlement in the appeal of the above-captioned case.
The parties have independently determined that the
public and private benefits of settlement are
significant, and outweigh their respective opportunities
to proceed with their important appellate rights. . . .
Hospira has vigorously contested [this Court’s] ruling
[on the ’867 Patent] before the Federal Circuit, but
faced the risk that the Court’s judgment will be
affirmed and that [Defendants] could enter the market
unimpaired. [Defendants], on the other hand, faced the
risk that the Court’s ruling will be reversed, possibly
leading to an injunction through 2019, and exposure to
3
damages if [they launch] while the appeal is pending.
Informed in large part by their experience at the trial
and their views of this Court’s decision, the parties
have now agreed that they and the public would be
benefited by increased certainty, and accordingly, they
have agreed that [Defendants] may launch [their] product
on December 26, 2014, or even earlier in certain
circumstances. That permits generic competition almost
five years before [Defendants] could launch if the ’867
patent were found valid.
The settlement balances the rights of both parties,
preserving [Plaintiffs’] important rights inherent in
patent ownership, while removing the possibility that
[Defendants] would be enjoined from launching [their]
product until the ’867 patent expires. Both sides have
independently assessed the risks of proceeding with
their appeals and have reached what they believe to be
an equitable settlement.
(Dkt. entry no. 404-1, Jt. Redacted Mem. of Law in Support of
Mot. to Vacate at 5-6.)
CPL filed a letter on the same day, notifying this Court of
its intention to seek intervention, as: (1) “Hospira sued [CPL]
in the United States District Court for the Eastern District of
Michigan (see Hospira, Inc. v. Caraco Pharms. Labs., Ltd., Case
No. 10-14514 (E.D. Mich.)) [(“Michigan Action”)], in November
2010 alleging infringement of the ’867 patent”; (2) “Hospira is
barred by collateral estoppel from pursuing a claim of
infringement of the ’867 patent in light of this Court’s ’867
Patent Invalidity Judgment”; (3) “at the invitation of the
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Michigan district court, [CPL] submitted a motion for summary
judgment based on collateral estoppel in view of [this Court’s]
’867 Patent Invalidity Judgment”; and (4) CPL “has a substantial
interest in any decision this Court may reach regarding vacatur”,
as “[a]ny decision by this Court regarding vacatur will
necessarily impact the Michigan [Action]”.
(Dkt. entry no. 407,
12-23-13 CPL Letter at 1-2.)
CPL followed by filing the cross motion on December 24,
2013.
(See CPL Notice of Cross Mot.)
In support, CPL stated
that briefing for the aforementioned motion for summary judgment
pending in the Michigan Action would be “close[d] on December 31,
2013”.
(Dkt. entry no. 410-1, CPL Br. in Support of Cross Mot.
at 3.)
CPL also filed separate opposition to the Motion to
Vacate.
(See dkt. entry no. 410-2, CPL Br. in Opp.)
CPL asserts
in the opposition brief that “[a]t present, the ’867 patent
stands invalid because of the Court’s judgment.”
(Id. at 13.)
Plaintiffs have filed opposition to the Cross Motion.
dkt. entry no. 411, Pls. Mem. in Opp.)
(See
They point out therein
that CPL was well-aware of the pending appeal and agreed to stay
the Michigan Action pending the outcome before the Federal
Circuit.
(See id. at 3.)
supports that contention.
The docket for the Michigan Action
See Michigan Action, dkt. entry no.
56, 5-7-12 So-Ordered Stipulation (staying Michigan Action
pending outcome of Federal Circuit appeal); dkt. entry no. 60, 5-
5
24-13 Order Extending Stay.
The stay in the Michigan Action
apparently was eventually extinguished, even though the dispute
addressed by this Court remained pending in the Federal Circuit.
WHETHER to permit CPL to intervene under Rule 24(b) is a
matter of discretion for this Court.
See Fed.R.Civ.P. 24(b)(3)
(stating intervention determination is discretionary exercise).
This Court initially finds that there is jurisdiction here, as
(1) this is a patent dispute, and (2) the action has been
remanded by the Federal Circuit.
This Court also finds that the
validity of the ’867 Patent is at issue here and in the Michigan
Action, and thus there is arguably a common question of law or
fact.
See Fed.R.Civ.P. 24(b)(1)(B).
BUT the Cross Motion insofar as it concerns intervention is
not timely, as CPL should have sought to intervene earlier.
See
Fed.R.Civ.P. 24(b)(1) (stating court may permit intervention
“[o]n timely motion”).
CPL was neither thwarted nor lulled into
complacency by Plaintiffs or Defendants.
Cf. United States v.
Alcan Aluminum, 25 F.3d 1174, 1181 (3d Cir. 1994) (stating movant
timely sought intervention, even though action had been ongoing
for several years, as party induced movant to refrain from moving
to intervene).
IT WOULD be inequitable to require parties engaged in
pharmaceutical-patent litigation to move to intervene in every
separate action in every district court wherein the same patent
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is at issue.
But it is not unreasonable for a nonparty to seek
to intervene in a separate action if that separate action has
reached the point of dispositive motions, trial, or appeal,
because at that point the nonparty knows or should know of its
interest in a case.
See Price v. Daigre, No. 08-16, 2011 WL
6046313, at *2 (S.D. Miss. Dec. 5, 2011) (denying intervention
motion in view of totality of circumstances); see also Univ. of
Notre Dame v. Sebelius, No. 13–3853, 2014 WL 687134, at *11 (7th
Cir. Feb. 21, 2014) (stating nonparty’s intervention may be
permitted for first time on appeal).
CPL failed to move to
intervene at any of the aforementioned points in this litigation
before the parties advised this Court that the dispute at issue
had been settled, and thus this Court finds the request to
intervene to be untimely.
See Ericsson, Inc. v. Interdigital
Commc’ns Corp., 418 F.3d 1217, 1222 n.5 (Fed.Cir. 2005)
(chastising movant for waiting until dispute had settled to move
to intervene, as movant was aware of progress of case for two
years before seeking to intervene).
CPL will not be prejudiced if its request to intervene is
denied, as it will not be prevented from arguing that the ’867
Patent is invalid in the Michigan Action.
CPL is aware of the
reasoning set forth in the May 2012 Opinion and can borrow that
reasoning in support of any future motion for summary judgment in
the Michigan Action.
See Price, 2011 WL 6046313, at *3 (finding
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movant seeking intervention not prejudiced “because it still has
an adequate remedy” within the confines of its own action).
Plaintiffs and Defendants, in stark contrast, will be prejudiced
if CPL is permitted to intervene at this stage and to interfere
with the settlement concerning the ’867 Patent.
See Fed.R.Civ.P.
24(b)(3) (stating “court must consider whether the intervention
will unduly delay or prejudice the adjudication of the original
parties’ rights”) (emphasis added).
IT IS unfortunate that Plaintiffs and Defendants could not
settle the dispute at issue before this Court issued the May 2012
Opinion.
But this Court sees no reason to squelch a settlement
agreement reached by the parties to this action while the dispute
at issue is pending at the appellate level.
See Price, 2011 WL
6046313, at *3 (finding parties would be prejudiced by
intervention, especially as case had progressed to settlement);
Dixon v. Margolis, No. 89-5019, 1992 WL 80512, at *5 n.5 (N.D.
Ill. Apr 14, 1992) (stating intervention motion filed after
original parties have settled is unlikely to be granted).
CPL’S ARGUMENT that the ’867 Patent is invalid due to the
May 2012 Judgment, and thus that the May 2012 Opinion carries
precedential weight, is without merit in view of the appellate
proceedings that remain pending before the Federal Circuit.
A
district court opinion issued in a pharmaceutical-patent dispute
that is on appeal to the Federal Circuit — as opposed to an
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opinion issued by the Federal Circuit itself — is mere persuasive
authority.
See Camreta v. Greene, 131 S.Ct. 2020, 2033 n.7
(2011) (stating district court decision is not binding precedent
in different district, in same district, or on same judge in
different case); Old Republic Ins. Co. v. Chuhak & Tecson, P.C.,
84 F.3d 998, 1003 (7th Cir. 1996) (stating “decisions by district
judges do not have the force of precedent”); McMullen v. European
Adoption Consultants, 129 F.Supp.2d 805, 811 n.2 (W.D. Pa. 2001)
(noting as to dispute therein “that the Court of Appeals has not
decided the question and that district court opinions are merely
persuasive authority”).
CPL’S ALTERNATIVE REQUEST for leave to file a brief as amicus
curiae is a matter to be decided in this Court’s discretion.
See
Waste Mgmt. of Pa. v. City of York, 162 F.R.D. 34, 37 (M.D. Pa.
1995); Yip v. Pagano, 606 F.Supp. 1566, 1568 (D.N.J. 1985),
aff’d, 782 F.2d 1033 (3d Cir. 1986) (table decision).
Leave to
so file may be granted if a court desires assistance in the
understanding of an issue, and if the information offered is
timely and useful.
See Waste Mgmt. of Pa., 162 F.R.D. at 36.
This Court requires no further assistance in this dispute and
declines to grant CPL leave to file a brief as amicus curiae.
See Avellino v. Herron, 991 F.Supp. 730, 732 (E.D. Pa. 1998).
THE MOTION TO VACATE has been made jointly by the parties to
this action.
They have settled part of their dispute amicably
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before incurring further expense at the appellate level.
Settlements are — of course — highly favored.
That generic
competition will occur sooner than later should also be highly
favored as a matter of public policy.
This Court sees no reason
to obstruct the settlement achieved here.
See Goldman v. Gen.
Accident Ins. Co. of Am., No. 01-2686, 2007 WL 2781935, at *1
(D.N.J. May 24, 2007) (granting motion to vacate opinion and
order where (1) parties agreed to settle dispute after notice of
appeal filed, (2) settlement was contingent on district court’s
vacatur, and (3) Court of Appeals granted uncontested motion for
limited remand for limited purpose of allowing parties to move to
vacate in district court); Kim v. United States, 903 F.Supp.
1546, 1546 (S.D.N.Y. 1995) (granting motion to vacate opinion and
judgment where (1) parties agreed to settle dispute after notice
of appeal filed, and (2) settlement was contingent on district
court’s vacatur).
This Court will exercise its discretion to
vacate its own rulings and grant the Motion To Vacate.
See
Fed.R.Civ.P. 60(b)(6), (c)(1).2
2
CPL relies on Devore v. City of Philadelphia, No. 00-3598,
2003 WL 21961975, at *1-3 (E.D. Pa. June 24, 2003), wherein (1)
judgment was entered upon a jury verdict, (2) the parties reached
an agreement to settle after judgment had been entered, and (3)
the court denied a motion to vacate the judgment. This Court
declines to follow Devore to the extent that its reasoning may be
viewed as being contrary to this Court’s decision.
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THE COURT will grant the Motion to Vacate, and deny the
Cross Motion.
For good cause appearing, the Court will issue an
appropriate order and judgment.3
s/ Mary L. Cooper
MARY L. COOPER
United States District Judge
Dated:
February 27, 2014
3
The 12-23-13 Federal Circuit Order states that “[t]he
parties should promptly inform [that] court of the district
court’s ruling on the motion pursuant to Fed.R.App.P. 12.1(b) and
should propose how they believe the appeals should proceed in
light of the district court’s ruling”. (12-23-13 Fed. Cir. Order
at 2.) The parties should now so inform the Federal Circuit.
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