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Abbott Labs. v. Lupin Ltd.

United States District Court for the District of Delaware

May 19, 2011, Decided; May 19, 2011, Filed

Civil Action No. 09-152-LPS



May 19, 2011

Wilmington, Delaware.

/s/ Leonard P. Stark

Stark, U.S. District Judge:

Presently before the Court are (1) the Motion to Preclude Defenses Not Disclosed in Defendants' Interrogatory Responses and to Strike Defenses Not Contained in Defendants' Paragraph IV Letter and Dismiss Related Counterclaims (D.I. 111) filed by Plaintiffs Abbott Laboratories and Abbott Respiratory LLC (together, "Abbott"); (2) the Motion for Leave to File a Surreply Brief  [*2] in Opposition to Abbott's Motion to Exclude Expert Evidence (D.I. 133) filed by Defendants Lupin Limited and Lupin Pharmaceuticals Inc. (together, "Lupin"); (3) the request made by Abbott to supplement its motion to preclude, which Abbott makes in its opposition brief to Lupin's motion for leave (D.I. 134); (4) the Motion for Summary Judgment of Invalidity of the '428 Patent (D.I. 147) filed by Lupin; and (5) the Motion for Summary Judgment of No Invalidity of U.S. Patent No. 6,080,428 for Double Patenting (D.I. 151) filed by Abbott.

For the reasons discussed, the Court will grant Lupin's motion for leave and Abbott's motion for summary judgment, but will deny the other three motions.


This is a Hatch-Waxman patent infringement action which Abbott initiated against Lupin on March 6, 2009, asserting infringement of U.S. Patent Nos. 6,129,930 ("the '930 patent"), 6,406,715 ("the '715 patent"), 6,676,967 ("the '967 patent"), 6,746,691 ("the '691 patent"), 7,011,848 ("the '848 patent"), and 6,080,428 ("the '428 patent") (together, the "patents-in-suit"). (See D.I. 1) Plaintiffs had received, on January 22, 2009, a Paragraph IV notice letter informing them of Lupin's ANDA Nos.  [*3] 90-446, 90-860, and 90-892, in which Lupin seeks FDA approval to market generic niacin extended-release tablets. (Id. at ¶¶ 30-31) Lupin's notice letter asserted only that the patents-in-suit were not infringed; no invalidity claims were made in the notice letter. (Id. at ¶ 32) Abbott Laboratories holds NDA No. 20-381 and has listed the patents-in-suit in the Orange Book as covering NIASPAN® niacin extended-release tablets in 500 mg, 750 mg, and 1000 mg. (Id. at ¶ 29)

Lupin filed its Answer (D.I. 7) on March 26, 2009, asserting defenses of non-infringement, invalidity, lack of personal jurisdiction, and improper venue. Subsequently, on September 24, 2009, Lupin amended its Answer to include two counterclaims for declarations of non-infringement and invalidity. (D.I. 39) Abbott answered the counterclaims. (D.I. 36)

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2011 U.S. Dist. LEXIS 53846 *; 2011 WL 1897322



patent, invalidity, defenses, notice, double-patenting, summary judgment, motion to exclude, expert report, infringement, parties, disclosure, sur-reply, disclosing, asserting, summary judgment motion, motion for leave, obviousness-type, argues, double patenting, Counterclaims, Interrogatory, discovery, rebuttal, factors, genuine, earlier-expiring, earlier-issued, later-issued, expiration, references