Motion for leave to file surreply brief and motion for summary judgment are granted
Abbott Laboratories, et al. v. Lupin Limited, et al., C.A. No. 09-152-LPS (D. Del. May 19, 2011)
Stark. J. The court granted defendants’ motion for leave to file surreply brief in opposition to plaintiffs’ motion to exclude expert evidence and plaintiffs’ motion for summary judgment of no invalidity for double patenting. The court denied plaintiffs’ motion to preclude defenses not disclosed in the defendants’ interrogatory responses and not contained in defendants’ Paragragh IV notice letter, defendants’ motion for summary judgment of invalidity for obviousness-type double patenting; and plaintiffs’ request to supplement its motion to preclude expert evidence.
This is an ANDA litigation involving generic niacin extended release tablets that was filed March 6, 2009. On May 19, 2011, the court addressed five motions that were pending before it. The court denied plaintiffs’ motion to preclude defenses defendants allegedly did not disclose in their Paragraph IV notice letter or interrogatory responses, reasoning, inter alia, the harm to defendants in not being able to utilize this critical information outweighed any prejudice to plaintiffs, which plaintiffs appeared to cure. Further, the court reasoned that it was bound by Federal Circuit precedent that holds that “[t]he Court has no authority to penalize deficiencies in Paragraph IV notice letters; the Hatch-Waxman Act creates no private cause of action for such notice letter shortcomings.” The court granted defendants’ motion for leave to file a surreply brief in opposition to plaintiffs’ motion to exclude expert evidence because the additional information would only assist the court in understanding the issues. The court denied plaintiffs’ motion to supplement its motion to preclude expert evidence, reasoning that plaintiffs should have raised the issue by separate motion and not in response to defendants’ motion for leave to file a surreply brief. The court granted plaintiffs’ cross-motion for summary judgment of no invalidity for double patenting and, at the same time, denied defendants’ motion for summary judgment of invalidity for double patenting. The court reached its summary judgment decision by adopting the holding in another recent Delaware case wherein, Chief Judge Bartle, sitting by designation, held that “a later-issued but earlier-expiring patent could not serve as a double-patenting reference against two earlier-issued but later-expiring patents[.]”
