Patent-in-suit found to be both invalid and not infringed
Alza Corporation and McNeil-PPC, Inc. v. Andrx Pharmaceuticals, LLC, et al., Civil Action No. 05-642-JJF, March 30, 2009.
Farnan J. Defendants' declaratory judgment counterclaims pertaining to one of the patents are dismissed without prejudice. Plaintiffs’ Motion To Strike Portions of Defendants' Post-Trial Findings of Fact is granted and Defendants' Contingent Cross Motion to Strike Portions of Plaintiffs' Post-Trial Findings Of Fact and Conclusions of Law is denied. In addition the Court finds the remaining patent-in-suit to be both invalid and not infringed.
This case arises from an ANDA filed by defendants seeking to market generic versions of CONCERTA. Initially the action included two patents, but Plaintiffs withdrew their claims as to the second just prior to trial. In response, Defendants filed an Answer and Counterclaims denying infringement and asserting the defense of invalidity. They also counterclaimed for a declaratory judgment of noninfringement and invalidity of both the patent-in-suit as well as the second patent. The Court finds it has no jurisdiction as to the counterclaims relating to the second patent and those counterclaims are therefore dismissed without prejudice. Next Plaintiffs request that the Court strike certain paragraphs of Defendants' Proposed Findings of Fact and Conclusions of Law, which pertain to Defendants' written description defense. Because Defendants have the burden of proof on a written description defense, the Court concludes that Defendants were obligated to raise this defense in their pre-trial briefing. Since they did not, they will be stricken. Defendants’ cross motion to strike is moot in light of the Court's conclusion that it does not have jurisdiction over those counterclaims relating to the second patent.
As for the plaintiffs’ infringement claims, the Court concludes that Defendants' ANDA products, if sold would not infringe the patent-in-suit. Defendants contend that the patent-in-suit is invalid as (1) obvious and (2) not enabled. The Court finds that while some of the evidence weighs in favor of a finding of obviousness, the Court concludes that Defendants have not met their burden to show that the patent-in-suit is invalid as obvious, particularly with regard to the secondary considerations such as the long felt need of others and commercial success. Finally, the Court concludes that Defendants have demonstrated by clear and convincing evidence that the patent-in-suit is invalid for lack of enablement for the full scope of the claims.
