KING DRUG COMPANY OF FLORENCE, INC vs. CEPHALON, INC., ET AL

Filing 888

ORDER THAT DIRECT PURCHASER CLASS PLAINTIFFS DAUBERT MOTION TO EXCLUDE THE OPINIONS OF MR. STONER AND DRS. COOPER IS GRANTED IN PART AND DENIED IN PART. DIRECT PURCHASER CLASS PLAINTIFFS DAUBERT MOTION TO EXCLUDE CEPHALON'S EXPERT OPINIONS ON INFRINGEMENT IS GRANTED IN PART AND DENIED IN PART. PLAINTIFF APOTEX, INC.'S DAUBERT MOTION NO.1 IS GRANTED IN PART AND DENIED IN PART. THE FTC'S MOTION TO EXCLUDE OPINIONS OF CEPHALON'S TEN PATENT EXPERTS IS GRANTED IN PART AND DENIED IN PART; ETC.. SIGNED BY HONORABLE MITCHELL S. GOLDBERG ON 11/5/15. 11/5/15 ENTERED AND COPIES MAILED, E-MAILED.(jl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA

______________________________________________________________________________
:
KING DRUG COMPANY OF FLORENCE, INC., :
CIVIL ACTION
et al.,
:
Plaintiffs,
:
:
v.
:
No. 2:06-cv-1797
:
CEPHALON, INC., et al.,
:
Defendants.
:
_________________________________________ :__________________________________
:
VISTA HEALTHPLAN, INC., et al.,
:
CIVIL ACTION
Plaintiffs,
:
:
v.
:
No. 2:06-cv-1833
:
CEPHALON, INC., et al.,
:
Defendants.
:
_________________________________________ :__________________________________
:
APOTEX, INC.,
:
CIVIL ACTION
Plaintiff,
:
:
v.
:
No. 2:06-cv-2768
:
CEPHALON, INC., et al.,
:
Defendants.
:
_________________________________________ :___________________________________

ORDER
AND NOW, this 5th day of November, 2015, upon consideration of “Direct Purchaser
Class Plaintiffs’ Daubert Motion to Exclude the Opinions of Mr. Stoner and Drs. Cooper and
Baranski” (Dkt. No. 06-1797, Doc. No. 603), “Direct Purchaser Class Plaintiffs’ Daubert Motion
to Exclude Cephalon’s Expert Opinions on Infringement” (Dkt. No. 06-1797, Doc. No. 604),
“Plaintiff Apotex, Inc.’s Daubert No. 1: Motion to Exclude Defendants’ Experts Gardner,
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Ludwig, Dahling and Karet” (Dkt. No. 06-2768, Doc. No. 698), and “Plaintiff Federal Trade
Commission’s Motion to Exclude Opinions of Cephalon’s Ten Patent Experts,” (Dkt. No. 082141, Doc. No. 280), which has been joined by the Private Plaintiffs, and upon consideration of
the responses and replies thereto, and for the reasons set forth in the accompanying
memorandum opinion, it is hereby ORDERED that:
— Direct Purchaser Class Plaintiffs’ Daubert Motion to Exclude the Opinions of Mr. Stoner
and Drs. Cooper and Baranski is GRANTED in part and DENIED in part. The motion
is granted with respect to any opinions by these experts that the RE ‘516 patent is valid,
that the omissions to the PTO were not material, or any legal standards that conflict with
this Court’s rulings in the Apotex validity trial. The motion is further granted with
respect to Mr. Stoner’s opinions regarding Cephalon’s intent. The motion is denied in
that these experts may testify regarding the Hatch-Waxman administrative framework,
legal standards at issue in the Paragraph IV litigation, and the arguments made by the
parties during the Paragraph IV litigation. This evidence is admissible for the limited
purposes of demonstrating, on an ex ante basis, the strength of the RE ‘516 patent and
that Cephalon’s Paragraph IV positions were reasonable at the time of the settlements.
— Direct Purchaser Class Plaintiffs’ Daubert Motion to Exclude Cephalon’s Expert
Opinions on Infringement is GRANTED in part and DENIED in part. The motion is
granted with respect to any opinions by these experts that the RE ‘516 patent is infringed
by the Generic Defendants’ modafinil products. The motion is further granted in that Dr.
Bugay’s opinions are excluded as unreliable. Further, any infringement opinion that
relies upon the testing performed by Dr. Bugay is also excluded. The motion is denied
such that Cephalon may present expert opinions, on an ex ante basis, regarding the claim

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construction and infringement arguments raised during the Paragraph IV litigation in an
effort to demonstrate that those infringement arguments were reasonable. The motion is
also denied as to Dr. Williams’ opinions regarding the doctrine of equivalents.
— Plaintiff Apotex, Inc.’s Daubert Motion No. 1 is GRANTED in part and DENIED in
part. The motion is granted with respect to any opinions that the patent is valid or
infringed, as well as any opinions that directly conflict with any legal standards I adopted
in the Apotex patent litigation. The motion is further granted in that Dr. Dahling and Mr.
Gardner’s opinions that Cephalon’s patent positions during the Paragraph IV litigation
were reasonable and that Cephalon could have realistically expected to succeed on the
merits are excluded. The motion is also granted regarding Mr. Ludwig’s opinion that he
would have counseled Ranbaxy to settle its litigation with Cephalon, and Dr. Dahling’s
opinions regarding litigation uncertainty. The motion is denied in that these experts may
explain the Hatch-Waxman administrative framework, the procedural history of the case,
and arguments made by Defendants during the Paragraph IV litigation on an ex ante
basis. The motion is also denied with respect to Mr. Ludwig’s opinions on the risks faced
by Ranbaxy in the Paragraph IV litigation and the procompetitive effects of settlement.
Apotex’s challenges to Dr. Dahling and Dr. Karet’s opinions on the reasonableness of
Cephalon’s license agreements are held under advisement.
— The FTC’s Motion to Exclude Opinions of Cephalon’s Ten Patent Experts is GRANTED
in part and DENIED in part. The motion is granted such that the experts may not
opine that the patent is presently valid and/or infringed, or testify as to any legal
standards that conflict with this Court’s holdings in the Apotex patent trials. The motion
is denied in that Defendants may present evidence regarding the ex ante strength of the

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RE ‘516 patent because such evidence does not run afoul of Federal Trade Commission
v. Actavis, Inc., 133 S. Ct. 2223 (2013).
BY THE COURT:
/s/ Mitchell S. Goldberg
______________________________
Mitchell S. Goldberg, J.

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