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Horizon Pharma, Inc. v. Dr. Reddy's Labs., Inc.

United States District Court for the District of New Jersey

August 25, 2017, Decided; August 25, 2017, Filed

Civil Action No. 15-3324 (SRC); Nos. 16-4918; 16-9035; 15-3327; 16-4921; 15-3326; 16-4920

Opinion

OPINION & ORDER

CHESLER, U.S.D.J.

This matter comes before this [*5]  Court on the motion to stay pending appeal by Plaintiffs Horizon Pharma, Inc., Horizon Pharma USA, Inc., and Pozen Inc. (collectively, "Plaintiffs"). For the reasons that follow, the motion will be granted in part and denied in part.

These cases arise from Hatch-Waxman litigation regarding patents related to the drug Vimovo®. Plaintiffs hold the patents and the various Defendants are pharmaceutical companies which have filed ANDA applications to produce generic versions. The first round of litigation involved U.S. Patent Nos. 6,926,907 and 8,557,285.1 Judge Cooper of this Court entered final judgment of patent infringement in favor of Plaintiffs, and Defendants have appealed to the Federal Circuit.

During the first round of litigation, nine additional patents related to Vimovo® issued and were listed in the Orange Book, and the cases at issue arose. Six of those patents descend from U.S. Patent No. 6,926,907: U.S. Patent Nos. 8,557,285, 8,852,636, 8,858,996, 8,865,190, 9,161,920, 9,198,888, and 9,345,695 (collectively, the "Plachetka Patents.") Three of the nine patents presently at issue do not descend from U.S. Patent No. 6,926,907: U.S. Patent Nos. 8,945,621, 9,220,698 and 9,393,208 (collectively, the "Ault Patents.")

In short, Plaintiffs contend that the issues regarding the two patents under appeal overlap substantially with the issues regarding the nine patents in the present cases, and [*6]  that the Federal Circuit's decision on the appeals now under review will "directly inform validity issues" in the instant cases. (Pls.' Br. 2.) Plaintiffs argue that, in the interest of judicial efficiency, this Court should stay all the instant cases while awaiting resolution of the pending appeals.

Defendants Dr. Reddy's Laboratories, Inc. and Dr. Reddy's Laboratories, Ltd. (collectively, "DRL"), Mylan Pharmaceuticals Inc., Mylan Laboratories Limited, and Mylan Inc. (collectively, "Mylan"), and Lupin Ltd. and Lupin Pharmaceuticals Inc. (collectively, "Lupin"), while filing separate opposition briefs, all propose the same bargain: they will agree to a partial stay of the cases in regard to the Plachetka Patents, but not the Ault Patents, "provided that Plaintiffs agree that the outcome of [the appeals] is binding as to both parties with respect to these patents." (Mylan's Opp. Br. 4 n.5.) DRL and Lupin phrase their contingency a little differently, but the idea is the same. Plaintiffs, in reply, refuse this bargain. It is, as well, a bargain that this Court declines to impose by Order, because the contingency is so vaguely phrased that this Court has no clue as to what it means: imposing [*7]  it would delay the litigation for the possible benefit of having to figure out what it means down the road.2

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2017 U.S. Dist. LEXIS 136492 *

HORIZON PHARMA, INC., HORIZON PHARMA USA, INC., and POZEN INC., Plaintiffs, v. DR. REDDY'S LABORATORIES, INC. and DR. REDDY'S LABORATORIES, Defendants.HORIZON PHARMA, INC., HORIZON PHARMA USA, INC., and POZEN INC., Plaintiffs, v. MYLAN PHARMACEUTICALS INC., MYLAN LABORATORIES LIMITED, and MYLAN, INC., Defendants.HORIZON PHARMA, INC., HORIZON PHARMA USA, INC., and POZEN INC., Plaintiffs, v. LUPIN LTD. and LUPIN PHARMACEUTICALS INC., Defendants.

Notice: NOT FOR PUBLICATION

Subsequent History: Patent interpreted by Horizon Pharma, Inc. v. Dr. Reddy's Labs., Inc., 2017 U.S. Dist. LEXIS 187822 (D.N.J., Nov. 14, 2017)

Stay denied by Horizon Pharma, Inc. v. Dr. Reddy's Labs., Inc., 2018 U.S. Dist. LEXIS 124288 (D.N.J., July 25, 2018)

Summary judgment granted by Horizon Pharma, Inc. v. Dr. Reddy's Labs., Inc., 2018 U.S. Dist. LEXIS 196702 (D.N.J., Nov. 19, 2018)

Summary judgment denied by Horizon Meds. LLC v. Dr. Reddy's Labs., Inc., 2019 U.S. Dist. LEXIS 194373 (D.N.J., Nov. 7, 2019)

Injunction denied by Horizon Meds. LLC v. Dr. Reddy's Labs., Inc., 2019 U.S. Dist. LEXIS 218330 (D.N.J., Dec. 18, 2019)

Prior History: Astrazeneca AB v. Dr. Reddy's Labs., Inc., 2013 U.S. Dist. LEXIS 36779 (D.N.J., Mar. 18, 2013)

CORE TERMS

Patents, simplify, Pharmaceuticals, contingency, bargain, reply, descend, overlap, partial, vague