Endo Pharmaceuticals Inc. v. Roxane Laboratories, Inc.

Filing 153

OPINION: Plaintiff's motion to strike Roxane's affirmative defense of unclean hands is hereby denied. This opinion resolves the item listed as document number 110 in this case. SO ORDERED. (Signed by Judge Thomas P. Griesa on 3/19/2015) (kl)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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ENDO PHARMACEUTICALS INC.,
Plaintiff,
13-CV-3288 (TPG)
-againstOPINION

ROXANE LABORATORIES, INC.,
Defendant.

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Plaintiff in this patent infringement action moves to strike
defendant's affirmative defense of unclean hands. For the following
reasons, plaintiff's motion to strike will be denied.
On May 15, 2013, plaintiff sued defendant for patent infringement,
claiming defendant infringed on three of its patents, United States Patent
numbers 8,309,122 ("the '122 patent"); 8,329,216 ("the '216 patent");
and 7,851,482 ("the '482 patent"), by applying to market a generic
oxymorphone hydrochloride product. Defendant filed its answer to the
complaint shortly thereafter.
On June 23, 2014 defendant filed a motion for leave to amend its
answer to add three new affirmative defenses: (1) an affirmative defense
of express license; (2) an affirmative defense of implied license; and (3) an
affirmative defense of unclean hands. The court granted leave to amend
solely with regard to the defense of unclean hands, noting that "Plaintiff
does not oppose this amendment." Opinion of Nov. 14, 2014 at 7.

Although plaintiff did not initially oppose the unclean hands
defense, it has now filed the instant motion to strike, arguing that it did
not learn of the basis for the defense until the hearing of January 23,
2015. See Pis'. Mem. Supp. Mot. Strike Aff. Def. Unclean Hands at 7.
Federal Rule of Civil Procedure 12(f) provides that the court may
strike a pleading on its own initiative, or "on motion made by a party
either before responding to the pleading or, if a response is not allowed,
within 21 days after being served with the pleading." Fed. R. Civ. P. 12(f).
Plaintiff was

served

November 21, 2014.

with

See Cert.

defendant's

amended

answer

on

Serv., Roxane's Am. Answer and

Affirmative Defenses at 17. Plaintiff responded to the answer on
December 8, 2014. See Dkt. # 102. Plaintiff filed its motion to strike the
defense of unclean hands on February 26, 2015, just weeks before the
scheduled start of trial. See Dkt. 110.
By filing its motion to strike after responding to the amended
answer, plaintiff failed to observe Federal Rule of Civil Procedure 12(f)(2).
Moreover, plaintiff's delay of three months far exceeded the timeframe
contemplated in Rule 12(f)(2).
Plaintiff repeatedly asserts that it did not learn of the basis for
defendant's unclean hands defense until January of this year. See Pis'.
Mem. L. Supp. Mot. Strike at 5-6. However, defendant fully explained its
reasons for asserting the defense in 2014, in its brief in support of its
motion to amend. See Defs.' Mem. L. Mot. Am. (Dkt. 68) at 3, 13-16. In

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responding to the motion to amend, plaintiff expressly consented to the
defense, stating: "As Endo has previously conveyed to Roxane, it does not
dispute Roxane's proposed amendment insofar as it asserts a new
unclean hands defense, and hence, Endo does not oppose Roxane's
motion solely with respect to that defense." Pis'. Mem. L. Opp. Mot. Am.
(Dkt. 71) at 1.
The court would deny the motion to strike even if it were not
untimely, and even if plaintiff had not already assented to the unclean
hands defense. By seeking an injunction against defendant, plaintiff
comes to the court in equity. Defendant has raised concerns that plaintiff
inequitably interfered with a supply agreement between defendant and
another entity. The defense of unclean hands deserves to be tried on the
merits.
Plaintiff's motion to strike Roxane's affirmative defense of unclean
hands is hereby denied. This opinion resolves the item listed as
document number 110 in this case.
SO ORDERED.
Dated: New York, New York
March 19, 2015

/~z~
Th!Ila; P~ Griesa

U.S. District Judge

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