Allergan, Inc. v. Sandoz, Inc. et al

Filing 94

MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 3/25/2013. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ALLERGAN, INC.,

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§ CIVIL ACTION NO. 2:12-cv-207-JRG
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Plaintiff,
v.
SANDOZ INC., et al.
Defendants.

MEMORANDUM OPINION AND ORDER
I.

Introduction

Before the Court is Defendants’ Motion to Stay Proceedings. (Dkt. No. 42.) Since filing
this Motion, Sandoz Inc., Alcon Laboratories, Inc., Alcon Research, Ltd., and Falcon
Pharmaceuticals, Ltd. have expressly withdrawn their support of the Motion to Stay. (See Dkt. No.
93). Apotex, Inc., Apotex Corp., and Watson Laboratories, Inc. continue to support and wage this
Motion. After considering the parties’ written submissions, the Court DENIES Defendants’
Motion.
II.

Facts

This is a Hatch-Waxman case involving U.S. Patent No. 8,133,890 (“the ’890 patent”); a
patent relating to glaucoma treatment. The ’890 patent stems from and claims priority to the same
parent application, shares the same specification, and expires on the same date as four related
patents filed in an earlier case, Allergan, Inc. v. Sandoz Inc., et al., CA No. 2:09-cv-97 (“Brim Tim
I”). In Brim Tim I, Allergan sought and won an injunction precluding Defendants from launching a
generic version of its glaucoma medication, Combigan®. Brim Tim I is currently on appeal to the
Federal Circuit; oral argument has been heard and a decision from that Court should issue soon.

The parties do not dispute that a ruling by the Federal Circuit in favor of Allergan is likely to
resolve this case.
Defendants move for a stay pending the outcome of the Brim Tim I appeal because
Allergan already has the relief it seeks in this case, i.e. an injunction barring Defendants from
launching their proposed generic products. Defendants argue that since an affirmance will moot
the issues in this case, a stay will only simplify the issues and promote judicial economy. In
response, Allergan emphasizes that while an affirmance may well obviate this case, a stay
followed by a reversal on appeal will cause irreparable harm to Allergan if Defendants are able to
launch their generic copies of Combigan® before a preliminary injunction issues in the present
case. Allergan filed a Motion for Preliminary Injunction on February 7, 2013 that is pending before
this Court. (Dkt. No. 78.)
III.

Applicable Law

“The district court has the inherent power to control its own docket, including the power to
stay proceedings.” Soverain Software LLC v. Amazon, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex.
2005) (citations omitted). Management of the court’s docket requires “the exercise of judgment,
which must weigh competing interests and maintain an even balance.” Landis v. N. Am. Co., 299
U.S. 248, 254 (1936). Courts typically consider three things when deciding whether to stay
litigation pending reexamination: “(1) whether a stay will unduly prejudice or present a clear
tactical advantage to the nonmoving party, (2) whether a stay will simplify issues in question and
trial of the case, and (3) whether discovery is complete and whether a trial date has been set.”
Soverain Software LLC, 356 F. Supp. 2d at 662.

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IV.

Analysis

Each of the three factors weighs against granting a stay. In a particular sense, staying this
action will likely cause undue prejudice to Allergan. In a general sense, all plaintiffs have an
interest in the timely enforcement of patent rights. Although the patents in this case and Brim Tim
I are related, the ’890 patent is a different patent and it contains different limitations. Additionally,
this Court has repeatedly emphasized that the uncertain outcome of reexamination proceedings
often weighs against granting a stay. See, e.g., Ambato Media, LLC v. Clarion Co., Ltd., et al.,
2:09-cv-242, 2012 U.S. Dist. LEXIS 7558, at *6 (E.D. Tex. Jan. 23, 2012). The outcome of an
appeal is no less uncertain. The first factor under the Soverain test weighs against a stay.
The second factor is whether a stay would simplify the issues in this case. The parties agree
that a ruling in Allergan’s favor would likely resolve this case. However, the outcome of Brim Tim
I on appeal is yet to be decided. Further, even if Defendants prevail, the Federal Circuit’s decision
may have little bearing on the issues in this case. An appellate decision on different patents with
different limitations will not necessarily impact the validity and infringement issues here. The
second Soverain factor also weighs against a stay.
The third factor is whether discovery is complete and whether a trial date is set. This case
has been pending for almost a year. Allergan has filed a Motion for Preliminary Injunction and the
parties have started claim construction briefing for the Markman hearing, which is set for May 31,
2013. Discovery is still ongoing in the present case and jury selection is scheduled for January 6,
2014. On the other hand, oral argument has already been held in Brim Tim I and both parties expect
the appellate decision to issue in the first half of 2013. As a result, a stay of only one or two months
would not serve judicial economy or conserve party resources in a meaningful way. On balance,
the third Soverain factor weighs slightly against a stay.
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V.

Conclusion

To differing degrees, all the relevant factors required to be analyzed under the Soverain
case weigh against the granting of a stay pending conclusion of the Brim Tim I appeal.
Accordingly, the Court DENIES Defendants’ Motion to Stay Proceedings (Dkt. No. 42).

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 25th day of March, 2013.

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RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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