HELSINN HEALTHCARE S.A. et al v. DR. REDDY'S LABORATORIES, LTD. et al
Filing
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OPINION filed. Signed by Judge Mary L. Cooper on 1/17/2013. (eaj)
NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
HELSINN HEALTHCARE S.A., et al.,
CIVIL ACTION NO. 12-2867 (MLC)
O P I N I O N
Plaintiffs,
v.
DR. REDDY’S LABORATORIES, LTD.,
et al.,
Defendants.
THE PLAINTIFFS, Helsinn Healthcare S.A. (“Helsinn”) and Roche
Palo Alto LLC (“Roche”), assignees of United States Patent No.
7,947,724 (“the ’724 Patent”), bring this action against the
defendants, Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s
Laboratories, Inc. (collectively, “the DRL Entities”).
no. 1, Compl.)
(Dkt. entry
Helsinn and Roche allege in this action that the
DRL Entities infringed the ’724 Patent by submitting New Drug
Application No. 203050 (“DRL Application”) to the United States
Food and Drug Administration (“FDA”).
(See id. at ¶¶ 13, 15.)
THE PARTIES appear not to dispute the facts material to
resolution of the infringement issue.
The DRL Entities thus moved
for summary judgment in their favor and against Helsinn and Roche
on that issue.
(Dkt. entry no. 13, Mot.)
Helsinn and Roche
opposed the Motion, and cross-moved for summary judgment in their
favor and against the DRL Entities on the same issue.
(See dkt.
entry no. 20, Pls.’ Opp’n Br.; dkt. entry no. 26, Cross Mot.)
THE COURT, upon reviewing the Motion and the Cross Motion,
recognized that this action related to another action pending
before the Court, Helsinn Healthcare S.A. v. Dr. Reddy’s Labs.,
Ltd., No. 11-3962 (MLC) (“the First Action”).
33, 12-17-12 Order to Show Cause at 2.)
(See dkt. entry no.
In the First Action, the
DRL Entities have, inter alia, challenged the validity of the ’724
Patent.
See DRL Answer & Counterclaims at Second Affirmative
Defense, Second Counterclaim, Helsinn Healthcare S.A. v. Dr.
Reddy’s Labs, Ltd., No. 11-3962 (D.N.J. Aug. 31, 2011), ECF No. 33.
The Court thus denied both the Motion and the Cross Motion without
prejudice, and ordered the parties to show cause why this action
should not be stayed and administratively terminated pending a
determination as to the validity of the ’724 Patent in the First
Action.
(See 12-17-12 Order to Show Cause at 3.)
BOTH the Plaintiffs in this action and the DRL Entities have
responded to the 12-17-12 Order to Show Cause.
(Dkt. entry no. 34,
Pls.’ Response; dkt. entry no. 35, DRL Entities’ Response.)
The
Court will now resolve the 12-17-12 Order to Show Cause without
oral argument, pursuant to Local Civil Rule 78.1(b).
BOTH the Plaintiffs in this action and the DRL Entities have
described the infringement issue as “narrow”, and argue that the
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Court should resolve the infringement issue before resolving the
invalidity issue in the first action.
DRL Entities’ Response at 1-2.)1
arguments unavailing.
(See Pls.’ Response at 1-2;
The Court finds the parties’
The United States Supreme Court has stated
that between the two questions -- that is, between infringement or
validity of a patent -- “validity has the greater public
importance”.
Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S.
83, 100 (1993); see also Pandrol USA, LP v. Airboss Ry. Prods.,
Inc., 320 F.3d 1354, 1364-65 (Fed. Cir. 2003).
Indeed, it appears
that the “better practice” requires district courts to “inquir[e]
fully into the validity of [a] patent.”
Cardinal Chem. Co., 508
U.S. at 100 (citation omitted).
Should the Court determine in the First Action that the ’724
Patent is valid, either the Plaintiffs in this action or the DRL
Entities may move to reopen this action and file the Motion and
Cross Motion anew.
However, should the Court determine in the
First Action that the ’724 Patent is invalid, then that
determination would render the Motion and Cross Motion moot.
“It
is hornbook law than an invalid patent cannot be infringed.”
Blumcraft of Pittsburgh v. Architectural Art Mfg., Inc., 337
F.Supp. 853, 859 (D. Kan. 1972), aff’d, 459 F.2d 482 (10th Cir.
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Helsinn and Roche have at least recognized that “the
validity of the ’724 Patent should be determined in the First
Action (which is already well underway, rather than concurrently in
two separate actions before this Court.” (Pls.’ Response at 1.)
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1972); see also Princeton Biochems., Inc. v. Beckman Coulter, Inc.,
411 F.3d 1332, 1339-40 (Fed. Cir. 2005) (court need not reach the
issue of infringement where the patent claims at issue are
invalid); Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580
(Fed. Cir. 1983) (“The claim being invalid, there is nothing to be
infringed.”); Leader Techs., Inc. v. Facebook, Inc., 770 F.Supp.2d
686, 701 (D. Del. 2011) (“an invalid patent cannot be infringed”),
aff’d, 678 F.3d 1300 (Fed. Cir. 2012), cert. denied, No. 12-617,
2013 WL 57200 (2013).
HELSINN AND ROCHE note that the DRL Entities, pursuant to the
relevant regulatory scheme, are barred from marketing their
allegedly infringing product until at least April 15, 2015.
Response at 2.)
(Pls.’
The Court accordingly finds it appropriate to stay
and administratively terminate this action pending a determination
of the validity of the ’724 Patent in the First Action, thereby
conserving judicial resources.
For good cause appearing, the Court
will issue a separate order to that effect.
s/ Mary L. Cooper
.
MARY L. COOPER
United States District Judge
Date:
January 17, 2013
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