BAYER HEALTHCARE PHARMACEUTICALS INC. v. BIOGEN IDEC MA INC.

CourtDistrict Court, D. New Jersey
DecidedNovember 5, 2021
Docket2:10-cv-02734
StatusUnknown

This text of BAYER HEALTHCARE PHARMACEUTICALS INC. v. BIOGEN IDEC MA INC. (BAYER HEALTHCARE PHARMACEUTICALS INC. v. BIOGEN IDEC MA INC.) is published on Counsel Stack Legal Research, covering District Court, D. New Jersey primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
BAYER HEALTHCARE PHARMACEUTICALS INC. v. BIOGEN IDEC MA INC., (D.N.J. 2021).

Opinion

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY _________________________________________

Civil Action No. 10-2734 (CCC)

IN RE BIOGEN ‘755 PATENT LITIGATION CLERK’S ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT BAYER’S MOTION TO TAX COSTS

This matter has come before the Clerk on the motion [Dkt. Entry 1140] of Defendant

Bayer HealthCare Pharmaceuticals Inc. (“Bayer”) to tax costs against Plaintiff Biogen MA

Inc. (“Biogen,” “Plaintiff”), pursuant to Federal Rule of Civil Procedure 54(d) and Local Civil

Rule 54.1. Biogen opposes this motion.

Having perused the very lengthy docket of this consolidated patent litigation, the Clerk

presents herein as brief a summary as is necessary to address the motion at hand, recognizing

that the parties are well-aware of the factual and procedural histories.

This litigation commenced with Bayer’s filing of suit [Dkt. Entry 1], Civil A. No.

10-2734, on May 27, 2010, seeking a declaratory judgment that Biogen’s U.S. Patent No.

7,588,755 (“the ‘755 patent”) is invalid and not infringed by Bayer’s Betaseron® product.

The following day, Biogen filed Civil A. No. 10-2760, alleging infringement of its ‘755 patent

by Bayer, and additional defendants, EMD Serono, Inc. (“Serono”), Pfizer Inc. (“Pfizer”),

and Novartis Pharmaceuticals Corp.(“Novartis”).1 The ‘755 patent was alleged to cover the

use of Biogen’s multiple sclerosis product, Avonex®, Bayer’s Betaseron®, Novartis’ Extavia®,

1 Unless otherwise noted, references herein are to Docket Entries (“Dkt. Entry”) in Civ. A. No. 10-2734, and not to Civ. A. No. 10-2760. and Serono and Pfizer’s Rebif®. While Biogen alleged that Serono and Pfizer infringed claims

1, 2 and 3 of the ‘755 patent, it asserted infringement of just claim 1 against Bayer and Novartis.2

On October 1, 2010, the Court consolidated both actions for all purposes, under the

original docket number, Civ. A. No. 10-2734, and recaptioned it, “In Re Biogen ‘755 Patent

Litigation.” [Dkt. Entry 37].

Markman briefing on the meaning of terms within claim 1 of the patent occurred in June

2011 [Dkt. Entries 113-19], and a hearing was conducted on January 12, 2012 [Dkt. Entry 167].

With the construction claim decision pending, fact discovery continued until March 15,

2013, by which time, the parties had produced more than 4 million pages of documents and had

conducted more than 65 depositions. [Dkt. Entry 260]. In April 2013, the Court referred the

matter to mediation, which took place for approximately eighteen months.

Meanwhile, on June 27, 2014, Serono filed a motion for partial summary judgment

as to Biogen’s claim of lost profits [Dkt. Entry 271], which was heard on February 25, 2015

[Dkt. Entry 328], and the motion was administratively terminated pending continued mediation

[Dkt. Entry 329].

With mediation having come to a standstill, on July 7, 2015, Magistrate Judge Clark

granted Biogen’s motion to amend the scheduling order, and ordered additional fact discovery

for 60 days, as well as the commencement of expert discovery. [Dkt. Entry 346]. On September

30, 2016, the Court administratively terminated Serono’s motion for partial summary judgment

again, pending the Court’s claim construction decision. [Dkt. Entry 368].

2 Biogen filed an Amended Complaint which also included a declaratory judgment claim, regarding a “Nonsuit and Option Agreement” between Biogen and Serono entities, Civ. A. No. 10-2760 [Dkt. Entry 61], and that Sixth Count was eventually dismissed with prejudice, in Serono’s favor. Civ. A. No. 10-2734 [Dkt. Entry 210]. -2- That decision came six months later, on March 28, 2016, when the Court issued its claim

construction opinion and order. [Dkt. Entries 403, 404].

On August 2, 2016, all defendants filed motions to sever for trial all claims by and

between Biogen and Bayer from those by and between Biogen, Serono, and Pfizer. [Dkt. Entries

433, 435].

October 2016 marked the start of multiple filings of pretrial motions. On October 11,

2016, Biogen filed a motion to strike the report of Bayer’s expert, Gordon P. Moore. [Dkt.

Entry 457].

Bayer then moved, on December 23, 2016, to strike the supplemental rebuttal expert

report of Biogen’s expert, Pastor R. Couceyro. [Dkt. Entry 486].

On February 3, 2017, the parties filed a host of summary judgment motions. Serono

and Pfizer moved for summary judgment of invalidity under 35 U.S.C. § 112 and under § 103.

[Dkt. Entries 501, 505].

Bayer filed four motions for summary judgment against Biogen, based upon:

1.) Obviousness-Type Double Patenting [Dkt. Entry 503]; 2.) Anticipation by the Treatment

References [Dkt. Entry 506]; 3.) Lack of Written Description [Dkt. Entry 509]; and

4.) Anticipation by Goeddel Patent [Dkt. Entry 513], as well as a motion for partial summary

judgment limiting damages [Dkt. Entry 517]. Novartis joined in on all five motions [Dkt. Entries

507, 508, 512, 516, 519], and Serono and Pfizer joined in on summary judgment motions nos.

2-4 [Dkt. Entries 529-531].

On March 16, 2017, the Court denied both Biogen’s motion to strike Bayer expert,

Moore, and Bayer’s motion to strike the Couceyro report. [Dkt. Entry 556].

-3- Bayer filed a sixth motion on June 22, 2017, seeking summary judgment against Biogen

based upon anticipation by the Weissmann patent. [Dkt. Entry 624]. Arguments on Bayer’s six,

and Serono’s and Pfizer’s two, summary judgment motions were heard on August 10 and 11,

2017. [Dkt. Entries 653, 654].

A plethora of in limine motions was then filed by the parties on October 10, 2017:

12 by Biogen; 6 by Serono/Pfizer, along with a Daubert motion; and 10 by Bayer. [Dkt. Entries

668-720].

On October 27, 2017, the Court entered its opinion and order [Dkt. Entries 742, 743]

granting the defendants’ motions to sever the two cases, and, consistent with prior scheduling

orders, Judge Cecchi ordered the trial of Biogen versus Serono and Pfizer to begin on

January 18, 2018.

On November 9, 2017, in response to the request of both Biogen and defendants Serono

and Pfizer, the Court amended its earlier Pre-trial Scheduling Order, to accommodate those

parties’ wishes to supplement their designations of deposition testimony to include designations

from fact witnesses who were to be presented live in Bayer’s case. [Dkt. Entry 815].

The Court denied Serono’s motion for partial summary judgment as to Biogen’s claim

for lost profits on December 22, 2017. [Dkt. Entries 884, 885, 1023].

On January 9, 2018, the Court denied the two Serono and Pfizer summary judgment

motions, as well as all six of Bayer’s summary judgment motions. [Dkt. Entries 892, 893, 1024].

On January 12, 2018, the Court issued its memorandum opinion and order, addressing

the majority of the in limine motions that had not been previously administratively terminated

without prejudice. [Dkt. Entries 906, 1025].

-4- The Joint Final Pretrial Order [Dkt. Entry 916] was entered on the docket on January 19,

2018, a day after the commencement of a five-week jury trial, which ended when the jury

rendered its verdict on February 23, 2018. [Dkt. Entries 921-23, 933, 934, 943, 945, 947, 949,

953-59, 961, 964-67, 969, 974]. The jury found that: the asserted claims of the ‘755 patent were

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