AbbVie Inc v. Roxane Laboratories, Inc.

Filing 14

MEMORANDUM denying (121 in case 2:12-cv-312; 70 in case 2:13-cv-645; 7 in case 2:13-cv-708) Motion to Consolidate Cases. Signed by Magistrate Judge Norah McCann King on 9/16/2013. (er1)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

ROXANE LABORATORIES, INC.,
Plaintiff,
vs.

Civil Action 2:12-cv-312
Judge Watson
Magistrate Judge King

ABBOTT LABORATORIES, et al.,
Defendants.

ABBVIE, INC.,
Plaintiff,
Civil Action 2:13-cv-645
Judge Watson
Magistrate Judge King

vs.

ROXANE LABORATORIES, INC.,
Defendant.

ABBVIE, INC.,
Plaintiff,
Civil Action 2:13-cv-708
Judge Watson
Magistrate Judge King

vs.

ROXANE LABORATORIES, INC.,
Defendant.

Memorandum
This matter is before the Court for consideration of AbbVie Inc.
(“AbbVie”) and Abbott Laboratories’ (“Abbott”) Motion to Consolidate
Related Actions (“Motion to Consolidate”), No. 2:12-cv-312 (S.D.
Ohio), Doc. No. 121; No. 2:13-cv-645 (S.D. Ohio), Doc. No. 70; No.

2:13-cv-708 (S.D. Ohio), Doc. No. 7, seeking to consolidate Case No.
2:13-cv-708 with two previously consolidated cases, Nos. 2:12-cv-312
and 2:12-cv-645 (the “Consolidated Cases”).

Roxane Laboratories, Inc.

(“Roxane”), opposes the Motion to Consolidate, Roxane Laboratories,
Inc.’s Opposition to AbbVie Inc’s and Abbott Laboratories’ Motion to
Consolidate Related Cases (“Roxane’s Response”), Doc. No. 122.

Abbott

and AbbVie have filed a reply, Reply in Support of
Defendants’/Counter-Plaintiffs’ Motion to Consolidate Related Actions
(“Abbott and AbbVie’s Reply”), Doc. No. 126.

For the reasons that

follow, the Motion to Consolidate is DENIED.
I.

Background
The Court has previously set forth the background of the

Consolidated Cases:
[AbbVie] is the holder of approved New Drug Application
(“NDA”) No. 22-417 for ritonavir tablets, 100 mg, which is
marketed and sold under the trade name Norvir®. No. 2:12cv-312 (S.D. Ohio), Doc. No. 58, ¶ 13. [AbbVie] also holds
the regulatory exclusivities associated with that NDA. Id.
[Roxane] has submitted Abbreviated New Drug Application No.
202573 (“ANDA 202573”) to the United States Food and Drug
Administration in order “to obtain regulatory approval to
engage in the commercial manufacture, use, or sale of
generic oral ritonavir tablets, 100 mg,” which are the
“bioequivalent” to Norvir®, “before the expiration of the
Listed Patents.”
No. 2:12-cv-312 (S.D. Ohio), Amended
Complaint, Doc. No. 56, ¶ 16.
Roxane filed suit in this Court on April 10, 2012 at 4:25
p.m., seeking a declaration of invalidity and noninfringement in connection with Patent Nos. 7,148,359 (the
“̔359 patent”) and 7,364,752 (the “̔752 patent”) held by
[Abbott and AbbVie] and relating to the drug Norvir®. See
id. at ¶¶ 1, 11-13. At 11:51 pm on that same day, Abbott
filed suit in the United States District Court for the
District of Delaware, alleging that Roxane’s ANDA infringed
Abbott’s ‘359 patent, ‘752 patent, and Patent Nos.
5,648,497
(the
“̔497
patent”),
6,037,157
(the
“̔157
patent”), and 6,703,403 B2 (the “̔403 patent”), all related
to the drug Norvir®.
2:13-cv-645 (S.D. Ohio), Complaint,

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Doc. No. 1, ¶ 3; 2:13-cv-645 (S.D. Ohio), Amended
Complaint, Doc. No. 8, ¶ 3. That action was transferred to
this Court on June 18, 2013. Id., Order, Doc. No. 65.
. . .
On July 23, 2013, the parties’ July 9, 2013 joint motion to
consolidate the Ohio action and the transferred action was
granted. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 120; No.
2:13-cv-645 (S.D. Ohio), Doc. No. 69.
No. 2:12-cv-312 (S.D. Ohio), Opinion and Order, Doc. No. 128, pp. 2-5.
AbbVie was issued patent Nos. 8,268,349 B2 (the “’349 patent”)
and 8,399,015 B2 (the “’015 patent”) on September 18, 2012 and March
19, 2013, respectively.

No. 2:13-cv-708 (S.D. Ohio), Complaint (“No.

13-708 Complaint”), ¶¶ 14-15; No. 2:13-cv-708 (S.D. Ohio), Answer and
Counterclaims of Defendant Roxane Laboratories, Inc. (“No. 13-708
Answer”), Doc. No. 8, at ¶¶ 14-15.

The ’349 and ’015 patents are both

listed in the Approved Drug Products with Therapeutic Equivalence
Evaluations (“Orange Book”) for NDA No. 22-417 and relate to the drug
Norvir®.

No. 13-708 Answer, ¶¶ 14-15.

Roxane subsequently amended ANDA 202573, seeking approval to
market generic ritonavir tablets prior to, inter alia, the expiration
of the ’349 and ’015 patents.

Id. at ¶ 13.

On July 18, 2013, AbbVie

filed suit in this Court, No. 2:13-cv-708 (S.D. Ohio) (“AbbVie II”),
alleging that Roxane’s ANDA infringed AbbVie’s ’349 and ’015 patents.
No. 13-708 Complaint, ¶¶ 3-4.

Abbott and AbbVie now seek to

consolidate AbbVie II with the Consolidated Cases.
II.

Discussion
Rule 42 of the Federal Rules of Civil Procedure authorizes the

consolidation of cases that “involve a common question of law or
fact.”

Fed. R. Civ. P. 42(a)(2).

A district court enjoys broad

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discretion in making that decisions.

Cantrell v. GAF Corp., 999 F.2d

1007, 1011 (6th Cir. 1993) (citing Stemler v. Burke, 344 F.2d 393, 396
(6th Cir. 1965)); Advey v. Celotex Corp., 962 F.2d 1177, 1180 (6th
Cir. 1992)).

“The underlying objective [of consolidation] is to

administer the court’s business with expedition and economy while
providing justice to the parties.”

Advey, 962 F.2d at 1181 (quotation

marks and citations omitted).
Roxane’s arguments to the contrary notwithstanding, see Roxane’s
Response, pp. 6-9, the Court finds that the cases presently before the
Court involve a common question of law or fact.

First, the Court

notes that the parties in the cases are identical.

Second, many of

the issues pertaining to infringement and invalidity arise in all the
cases.

All of Abbott and AbbVie’s claims and counterclaims relate to

Roxane’s ANDA 202573 and will therefore involve issues of infringement
of the same generic ritonavir product.

Similarly, all the patents at

issue relate to Norvir®, and both actions involve patents directed to
aspects of the ritonavir pharmaceutical formulations.

Because of

these similarities, it is also likely that there will be overlap
between the evidence used in both cases.

For example, at least one

reference cited by Roxane concerning the alleged invalidity of the
’359 and ’752 patents is also cited as support for the alleged
invalidity of the ’349 and ’015 patents.

See Abbott and AbbVie’s

Reply, Exhibit E, at pp. 14-20; Exhibit F, at pp. 3-4, 7-8.

Although

all parties acknowledge that the “precise technical nature” of the
patents in AbbVie II is different from that of the patents at issue in
the Consolidated Cases, there is sufficient overlap between the

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patents and infringement claims to find a common question of law and
fact.
This threshold determination does not, however, end the Court’s
inquiry.

Cantrell, 999 F.2d at 1011-12; Banacki v. OneWest Bank, FSB,

276 F.R.D. 567, 571 (E.D. Mich. 2011) (“Whether cases present a common
question of law or fact is only a threshold requirement; once a common
question has been established, the decision to consolidate rests in
the sound discretion of the district court.”) (citations omitted).
The Court must also consider:
“Whether the specific risks of prejudice and possible
confusion [are] overborne by the risk of inconsistent
adjudications of common factual and legal issues, the
burden
on
parties,
witnesses
and
available
judicial
resources posed by multiple lawsuits, the length of time
required to conclude multiple suits as against a single
one, and the relative expense to all concerned of the
single-trial, multiple-trial alternatives.”
Cantrell, 999 F.2d at 1011 (quoting Hendrix v. Raybestos-Manhattan,
Inc., 776 F.2d 1492, 1495 (11th Cir. 1985)).

The United States Court

of Appeals for the Sixth Circuit has advised that “the decision to
consolidate is one that must be made thoughtfully with specific
reference to the factors identified above.

Care must be taken that

consolidation does not result in unavoidable prejudice or unfair
advantage.”

Id.

If the conservation of judicial resources achieved

through consolidation is “slight, the risk of prejudice to a party
must be viewed with even greater scrutiny.”

Id.

In the cases presently before the Court, Roxane argues that
consolidation would not promote judicial economy and that it would be
prejudiced by consolidation because “there is a substantial difference
in trial readiness between [AbbVie II and the Consolidated Cases].”

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Roxane’s Response, pp. 2, 5-6.

Roxane further argues that

consolidation will significantly impact the case schedule in the
Consolidated Cases and that Roxane “will be unavoidably prejudiced
because consolidation will delay resolution of all the actions beyond
30 months from the filing of [Case No. 12-312].”

Id. at pp. 6, 9-10.

Roxane’s conclusory argument in this regard fails to explain precisely
how or why Roxane will be prejudiced by a delay in the Consolidated
Cases.

Nevertheless, however, the Court is not convinced that

consolidation would best serve the interests of justice or promote the
objective of consolidation.
Abbott and AbbVie argue that consolidation would promote judicial
economy and the interest of justice because consolidation will prevent
“duplicative, highly overlapping discovery” in the two cases.

See

Motion to Consolidate, p. 6 (“Consolidation is warranted here for at
least the purpose of simplifying and streamlining the discovery
process, in light of the likelihood that AbbVie would be subjected to
duplicative, highly overlapping discovery if the cases were not
consolidated.”).

See also id. at pp. 6-9.

However, AbbVie II and the

Consolidated Cases are pending before the same judicial officers.

The

Court can therefore coordinate discovery and minimize the risk and
burden of duplicative discovery even without consolidation.

See e.g.,

LSP Technologies, Inc. v. Metal Imp. Co. LLC, No. 2:10-cv-526, 2010 WL
3447834, at *2 (S.D. Ohio Aug. 30, 2010) (noting that “the existence
of overlapping counterclaims does not weigh heavily in favor of
consolidation” because the parties could coordinate discovery to
permit discovery conducted in one case to be used in the other);

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Beverlly Jewerlly Co., Ltd. V. Tacori Enters., No. 1:06cv1967, 2006 WL
3304218, at *2 n.1 (N.D. Ohio Nov. 13, 2006) (“[T]o the extent that
[the parties] will be engaging in the same discovery for their
respective cases, those discovery efforts can be coordinated by the
parties whether or not those actions are formally consolidated.”).
The fact that both cases are pending before the same judicial officers
also minimizes the risk of inconsistent results and lessens the burden
on the Court.

See LSP Technologies, Inc., 2010 WL 3447834 at *2

(declining to consolidate cases and finding the risk of inconsistent
claim constructions to be minimal where the same District Judge
presided over both cases).

Finally, AbbVie II and the Consolidated

Cases are at significantly different stages of litigation.

The

Consolidated Cases were filed in April 2012, i.e., fifteen months
prior to the filing of AbbVie II, and the parties have engaged in
extensive discovery in the Consolidated Cases.

See e.g., Abbott and

AbbVie’s Reply, p. 3 (noting that AbbVie has already produced over 4
million pages of documents).

Many of the original deadlines set in

Case No. 12-312 have already been extended by approximately one year,
see No. 12-312 (S.D. Ohio), Preliminary Pretrial Order, Doc. No. 29;
No. 12-312 (S.D. Ohio), Order, Doc. No. 124, and consolidation would
require yet additional and significant extensions to the schedule in
the Consolidated Cases.

In an effort to achieve the expeditious

resolution of the Consolidated Cases and minimize delay to the
parties, the Court is at present unwilling to further extend that
schedule for purposes of consolidation.

Should the schedule in the

Consolidated Cases change, or should the schedule yet to be set in

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AbbVie II, militate in favor of formal consolidation of the cases, the
Court will of course entertain a request to revisit this issue at that
time.
Based on the foregoing, the Court concludes that its discretion
is better exercised at this time by denying consolidation.

Abbott and

AbbVie’s Motion to Consolidate, No. 2:12-cv-312 (S.D. Ohio), Doc. No.
121; No. 2:13-cv-645 (S.D. Ohio), Doc. No. 70; No. 2:13-cv-708 (S.D.
Ohio), Doc. No. 7, is therefore DENIED.

The Court notes that a

preliminary pretrial conference is scheduled in AbbVie II for October
2, 2013 at 1:45 p.m.

The parties must be prepared to discuss the

coordination of discovery between AbbVie II and the Consolidated Cases
at that time.

September 16, 2013

s/

Norah McCann King
Norah McCann King
United States Magistrate Judge

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