Pfizer Inc. v. Teva Pharms. U.S.A., Inc.

• Citation: 882 F.Supp.2d 643
• Decision Date: 19 July 2012
• Docket Number: C.A. No. 09–cv–307 (GMS).
• Parties: PFIZER INC., Warner–Lambert Company L.L.C., C.P. Pharmaceuticals International C.V., and Northwestern University, Plaintiffs, v. TEVA PHARMACEUTICALS U.S.A., INC., and Teva Pharmaceutical Industries, Ltd., et al., Defendants.
• Court: United States District Courts. 3th Circuit. United States District Court (Delaware)

882 F.Supp.2d 643

PFIZER INC., Warner–Lambert Company L.L.C., C.P. Pharmaceuticals International C.V., and Northwestern University, Plaintiffs,
v.
TEVA PHARMACEUTICALS U.S.A., INC., and Teva Pharmaceutical Industries, Ltd., et al., Defendants.

C.A. No. 09–cv–307 (GMS).

United States District Court,
D. Delaware.

July 19, 2012.

41,920. Valid and Infringed.

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Jack B. Blumenfeld, Maryellen Noreika, Morris, Nichols, Arsht & Tunnell LLP, Daniel M. Silver, McCarter & English, LLP, Wilmington, DE, Adam Gahtan, Brendan G. Woodard, Dimitrios T. Drivas, Jeffrey J. Oelke, Ryan Johnson, Robert E. Counihan, White & Case LLP, New York, NY, Kevin M. Flowers, Mark H. Izraelewicz, Matthew C. Nielsen, Marshall, Gerstein & Borun LLP, Chicago, IL, for Plaintiffs.

Joseph H. Huston, Jr., Stevens & Lee, Mary Matterer, Morris James LLP, Kurt M. Heyman, Dominick T. Gattuso, Proctor Heyman LLP, Kelly E. Farnan, Jeffrey L. Moyer, Richards, Layton & Finger, PA, Richard D. Kirk, Bayard, P.A., John C. Phillips, Jr., Megan C. Haney, Phillips, Goldman & Spence, P.A., Elizabeth M. McGeever, Prickett, Jones & Elliott, P.A., Wilmington, DE, Caryn C. Borg–Breen, Christopher T. Griffith, Leydig, Voit & Mayer, LTD., Jeremy C. Daniel, Robert B. Breisblatt, Stephen P. Benson, Katten Muchin Rosenman LLP, Chicago, IL, Thomas P. Krzeminski, William O. Adams, Knobbe Martens Olson & Bear LLP, Irvine, CA, William R. Zimmerman, Knobbe Martens Olson & Bear LLP, C. Nicole Gifford, Edward A. Figg, Joseph A. Hynds, Rothwell, Figg, Ernst & Manbeck, P.C., Washington, DC, R. Elizabeth Brenner–Leifer, for Defendants.

MEMORANDUM
GREGORY M. SLEET, Chief Judge.
I. INTRODUCTION

In this consolidated patent infringement action, plaintiffs Pfizer Inc., Warner–Lambert Company, L.L.C., C.P. Pharmaceuticals International C.V., and Northwestern University (collectively, “the plaintiffs”) allege that pharmaceutical products proposed by defendants Actavis Elizabeth, L.L.C., Actavis, Inc., Alphapharm Pty. Ltd., Mylan Pharmaceuticals, Inc., Cobalt Laboratories, Inc., Lupin Ltd., Sandoz, Inc.,¹ Sun Pharma Global, Inc., Sun Pharmaceutical Industries, Ltd., Sun Pharmaceutical Industries, Inc., Teva Pharmaceuticals U.S.A., Inc., Teva Pharmaceutical Industries, Ltd., Wockhardt Limited, and Wockhardt U.S.A., L.L.C. (collectively,

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“the defendants”) infringe the asserted claims of the patents-in-suit. (D.I. 1.) The court held a nine-day bench trial in this matter on October 11 through October 21, 2011. (D.I. 362–370.) Presently before the court are the parties' post-trial Findings of Fact and Conclusions of Law concerning the validity of the patents-in-suit and whether the defendants' proposed products infringe the patents-in-suit. (D.I. 349–353.)

Pursuant to Federal Rule of Civil Procedure 52(a), and after having considered the entire record in this case and the applicable law, the court concludes that: (1) the asserted claims of the patents-in-suit are not invalid due to obviousness; (2) the asserted claims of the patents-in-suit are not invalid due to anticipation; (3) the asserted claims of the '819 and '175 Patents are entitled to a November 27, 1990 priority filing date; (4) the asserted claims of the '819 Patent are not invalid for written description ²; (5) the asserted claims of the ' 819 Patent are not invalid due to improper inventorship; (6) the defendants' proposed products do not literally infringe claims 1 and 4 of the ' 819 Patent; (7) the defendants' proposed products infringe claims 1 and 4 of the ' 819 Patent under the doctrine of equivalents; (8) the '819 and ' 876 Patents' term extensions are not invalid under 35 U.S.C. § 156; and (9) each of the parties' Rule 52(c) motions are granted in part and denied in part. These findings of fact and conclusions of law are set forth in further detail below.

II. FINDINGS OF FACT³A. The Parties

1. Plaintiff Pfizer Inc. (“Pfizer”) is a corporation organized and existing under the laws of the State of Delaware, having a place of business at 235 East 42nd Street, New York, New York 10017.

2. Plaintiff Warner–Lambert L.L.C. (“Warner–Lambert”) is a limited liability company organized and existing under the laws of the State of Delaware, having a place of business at 235 East 42nd Street, New York, New York 10017. Pfizer Inc. is the ultimate parent of Warner–Lambert Company L.L.C.

3. Plaintiff C.P. Pharmaceuticals International C.V. (“CPPI CV”) is a limited partnership organized under the laws of the Netherlands, having its registered seat in Rotterdam, and is represented by its general partners, Pfizer Manufacturing L.L.C., a limited liability company organized under the laws of the State of Delaware and having a place of business at 235 East 42nd Street, New York, New York 10017 and Pfizer Production L.L.C., a limited liability company organized under the laws of the State of Delaware, and having a place of business at 235 East 42nd Street, New York, New York 10017, jointly

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acting, each in its capacity as a general partner for and on behalf of CPPI CV. Pfizer Inc. is a limited partner of and is the ultimate parent of all other partners of CPPI CV.

4. Plaintiff Northwestern University (“Northwestern”) is an Illinois corporation, having its principal place of business at 633 Clark Street, Evanston, Illinois.

5. Defendant Actavis Elizabeth L.L.C. is a limited liability company organized and existing under the laws of the State of Delaware, having a principal place of business at 200 Elmora Avenue, Elizabeth, New Jersey. Actavis Elizabeth L.L.C. is a wholly owned subsidiary and agent of defendant Actavis, Inc.

6. Defendant Actavis, Inc. (together with Actavis Elizabeth L.L.C., “Actavis”) is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 60 Columbia Road, Building B, Morristown, New Jersey.

7. Defendant Alphapharm Pty. Ltd. (“Alphapharm”) is a corporation organized and existing under the laws of Australia, having a principal place of business at Chase Building 2, Wentworth Park Road, Glebe, NSW 2037, Australia.

8. Defendant Mylan Pharmaceuticals Inc. (“Mylan”) is a corporation organized, and existing under the laws of the State of West Virginia, having a principal place of business at 781 Chestnut Ridge Road, Morgantown, West Virginia 26505.

9. Defendant Cobalt Laboratories, Inc. is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 24840 South Tamiami Trail, Ste. 1, Bonita Springs, Florida.

10. Defendant Cobalt Pharmaceuticals, Inc. (together with Cobalt Laboratories, Inc., “Cobalt”), a sister company of Cobalt Laboratories, Inc., is a corporation organized and existing under the laws of Canada having a principal place of business at 6500 Kitmat Road, Mississauga, Ontario, Canada.

11. Defendant Lupin Ltd. is a company organized and existing under the laws of India, having a principal place of business at Laxmi Towers, B Wing, Bandra Kurla Complex, Bandra (East), Mumbai, Maharashtra 400 051, India.

12. Defendant Lupin Pharmaceuticals, Inc. (together with Lupin Ltd., “Lupin”) is a corporation organized and existing under the laws of the State of Virginia, having a principal place of business at 111 South Calvert Street, Ste. 2150, Baltimore, Maryland. Lupin Pharmaceuticals, Inc. is a wholly-owned subsidiary of Lupin Ltd.

13. Defendant Sandoz, Inc. (“Sandoz”) is a corporation organized and existing under the laws of the State of Colorado, having a principal place of business at 506 Carnegie Center, Ste. 400, Princeton, New Jersey.

14. Defendant Sun Pharma Global, Inc. is a company organized and existing under the laws of the British Virgin Islands, having a principal place of business at Akara Building, 24 De Castro Street, Wilkhams Clay 1 Road, Town Tartola, British Virgin Islands. Sun Pharma Global Inc. is a wholly-owned subsidiary of defendant Sun Pharmaceutical Industries Ltd.

15. Defendant Sun Pharma Industries Ltd. is a company organized and existing under the laws of India, having a principal place of business at Acme Plaza, Andheri Kurla Road, Andheri East, Mumbai 400 059, India.

16. Defendant Sun Pharmaceutical Industries, Inc. (together with Sun Pharma Global, Inc. and Sun Pharma Industries Ltd., “Sun Pharma”) is a company organized and existing under the laws of the

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State of Michigan, having a principal place of business at 270 Prospect Plains Road, Cranbury, New Jersey 08512. Sun Pharmaceutical Industries, Inc. is a wholly owned subsidiary of defendant Sun Pharmaceutical Industries, Ltd.

17. Defendant Teva Pharmaceutical Industries, Ltd. (“Teva Ltd.” and. together with Teva Pharmaceuticals U.S.A., Inc., “Teva”) is a corporation organized and existing under the laws of Israel, having a principal place of business at 5 Basel Street, Petach Tikva 49131, Israel.

18. Defendant Teva Pharmaceuticals U.S.A., Inc. (“Teva U.S.A.” and, together with Teva Pharmaceutical Industries, Ltd., “Teva”) is a Delaware corporation having a principal place of business at 1090 Horsham Road, North Wales, Pennsylvania 19454.

19. Defendant Wockhardt Limited is a company organized and existing under the laws of India, having a principal place of business at Wockhardt Towers, Bandra Kurla Complex, Bandra East, Mumbai, 400 511, India.

20. Defendant Wockhardt U.S.A., L.L.C. (together with Wockhardt Limited, “Wockhardt”) is a limited liability company organized and existing under the laws of the State of Delaware, having a place of business at 20 Waterview Boulevard, Parsippany, New Jersey 07054. Wockhardt U.S.A., L.L.C. is a wholly-owned subsidiary and agent of defendant Wockhardt Limited.

B. Background

21. 4–amino–3–(2–methylpropyl) butanoic acid is also known as “3–isobutylGABA” or “3IBG” and is used to treat seizures.

22. 3–isobutylGABA is a chiral compound: it exists in two different mirror-image orientations in space, called “enantiomers.”...