Warner Chilcott Co. v. Teva Pharmaceuticals USA, Inc.

37 F. Supp. 3d 731
CourtDistrict Court, D. Delaware
DecidedMarch 28, 2014
DocketC.A. No. 08-627-LPS, C.A. No. 11-81-LPS, C.A. No. 09-143-LPS; C.A. No. 09-143-LPS (consolidated with C.A. No. 08-627-LPS); C.A. No. 10-285-LPS (consolidated with C.A. No. 08-627-LPS); C.A. No. 09-61-LPS (consolidated with C.A. No. 08-627-LPS)
StatusPublished
Cited by1 cases

This text of 37 F. Supp. 3d 731 (Warner Chilcott Co. v. Teva Pharmaceuticals USA, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Warner Chilcott Co. v. Teva Pharmaceuticals USA, Inc., 37 F. Supp. 3d 731 (D. Del. 2014).

Opinion

MEMORANDUM OPINION

STARK, U.S. District Judge:

Presently before the Court are the Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 103 for Obviousness (D.I.330) and Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 112 for Inadequate Written Description and Failure to Enable the Full Scope of the Claims (D.I.303), both filed by Defendants Apotex Corp., Apotex, Inc., Teva Pharmaceuticals USA, Inc., Mylan Pharmaceuticals, Inc., and Sun Pharma Global FZE’s (collectively, “Defendants”). Also pending is the Motion for Summary Judgment of Infringement (D.I.333) filed by Plaintiffs Warner Chilcott Company, LLC and Hoff-mann-La Roche Inc. (collectively, “Plaintiffs”).

For the reasons discussed below, the Court will grant Defendants’ Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 103 and deny as moot the remaining motions.

I. BACKGROUND

On September 26, 2008, Plaintiffs brought suit (D.I.l) alleging that Defendant Teva’s abbreviated new drug application (“ANDA”) infringed U.S. Patent No. 7,192,938 (the ’ “'938 patent”) (D.I. 336 Ex. 2). On January 24, 2011, Plaintiffs filed another action against Teva (C.A. No. 11-81-LPS), which is now consolidated with [733]*733the earlier action,1 asserting infringement of U.S. Patent No.' 7,718,634 (the ’ “'634 patent”). The ’938 and ’634 patents (“patents-in-suit”) are continuations from the same parent application, U.S. Application No. 10/430,007, and relate to methods for treating or preventing osteoporosis or postmenopausal osteoporosis using a monthly dose of a pharmaceutically acceptable salt of risedronic acid, a nitrogen-containing bisphosphonate (“NCBP”). It is undisputed that osteoporosis is a disorder of abnormal bone resorption and bone loss. (Id. at col.l, 11.34-43)

The Court construed the disputed claim terms. (D.I.290) Trial was set to begin on July 23, 2012, but, at the request of most of the parties (D.I.319), the Court can-celled trial after a decision was issued by the Honorable Stanley R. Chesler of the District of New Jersey invalidating claims 1-8 of the ’634 patent2 (D.I.322). Subsequently, the parties requested the opportunity to file the pending motions (D.I.323), on which the Court heard oral argument on December 14, 2012 (D.I.392) (“Tr.”).

II. LEGAL STANDARDS

A grant of summary judgment is appropriate only where “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c)(2). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). If the moving party has carried its burden, the non-movant must then “come forward with ‘specific facts showing that there is a genuine issue for trial.’ ” Id. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The Court will “draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). If the Court is able to determine that “there is no genuine issue as to any material fact” and that the movant is entitled to judgment as a matter of law, summary judgment is appropriate. See Hill v. City of Scranton, 411 F.3d 118, 125 (3d Cir.2005); see also Fed.R.Civ.P. 56(c).

To defeat a motion for summary judgment, the nonmoving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586, 106 S.Ct. 1348; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir.2005) (stating party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Moreover, the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment;” a factual dispute is genuine only where “the evi[734]*734dence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

III. DISCUSSION

A. Defendants’ Motion for Summary Judgment Under 35 U.S.C.§ 103

A patent is invalid if the differences between the invention and the prior art are such that the invention would have been obvious to one of ordinary skill in the art at the time of the invention. See 85 U.S.C. § 103; see also In re O’Farrell, 853 F.2d 894, 904 (Fed.Cir.1988). Obviousness is a question of law based on factual determinations, including: “(1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, known as objective indicia of non-obviousness.” Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1007 (Fed.Cir.2009).

In May 2012, Judge Chesler of the District of New Jersey reviewed the ’634 patent and granted summary judgment of invalidity under 35 U.S.C. § 103. See Hoffmann-La Roche Inc. v. Apotex Inc., 2012 WL 1637736, at *1 (D.N.J. May 7, 2012) (“Hoffman ”). Claims 1-8 of the ’634 .patent were asserted in Hoffmann and claimed a once monthly dosage of ibandronate for the treatment of osteoporosis. See id. at *3. The prior art before the Hoffman Court included: Lunar News Spring 1999,3 Ravn 1996,4 U.S. Patent Nos. 6,432,932 (“Daifotis”), 6,468,559 (“Chen”), 5,616,560 (“Geddes”), Riis,5 U.S.

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37 F. Supp. 3d 731, Counsel Stack Legal Research, https://law.counselstack.com/opinion/warner-chilcott-co-v-teva-pharmaceuticals-usa-inc-ded-2014.