Janssen Biotech, Inc. v. Celltrion Healthcare Co.
United States District Court for the District of Massachusetts
March 2, 2017, Decided; March 3, 2017, Filed
C.A. No. 15-10698-MLW; 16-11117-MLW
[*330] MEMORANDUM AND ORDER
At the January 18 and February 14, 2016 scheduling conferences, the parties requested the court's guidance on the appropriate measure of damages to which plaintiff Janssen Biotech, Inc. ("Janssen") would be entitled if defendants Celltrion Healthcare, Co. and Celltrion, Inc. (together, "Celltrion") and Hospira, Inc. ("Hospira") are found to have infringed U.S. Patent No. 7,598,083 (the "'083 Patent"). The parties represented that such guidance would facilitate informed settlement discussions. A hearing on issues concerning the standards for determining damages was held on February 23 and 24, [**5] 2017. For the reasons explained in detail at those hearings, the court provided the following guidance to the parties.
1. A plaintiff is entitled to compensation for reasonably foreseeable lost profits that it would not have suffered "but for" the defendant's infringement. See Rite-Hite Corp. v. Kelley Co., Inc., 56 F. 3d 1538, 1545 (Fed. Cir. 1995). "A fair and accurate reconstruction of the 'but for' market ...must take into account, where relevant, alternative actions the infringer foreseeably would have undertaken had he not infringed" and, therefore, "takes into account any [adequate] alternatives available to the infringer." Grain Processing Corp. v. American Maize, 185 F. 3d 1341, 1350-51 (Fed. Cir. 1999). Accordingly, if Celltrion could, as a practical matter, have made the Remicade biosimilar, Inflectra, that it began marketing in the United States on about January 1, 2017--at a competitive price and on a comparable schedule--without infringing the '083 Patent, Janssen would not be entitled to recover any profits on Remicade that it lost to Inflectra. It would, instead, be limited to a reasonable royalty.
2. The fact that Celltrion produces Inflectra abroad would not prevent Janssen from recovering lost profits relating to sales of Inflectra in the United States if those sales could not have been made without the production and sale of the [**6] infringing media powders in the United States.Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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239 F. Supp. 3d 328 *; 2017 U.S. Dist. LEXIS 30507 **
JANSSEN BIOTECH, INC. ET AL, Plaintiffs, v. CELLTRION HEALTHCARE CO. INC., ET AL., Defendants.
Prior History: Janssen Biotech, Inc. v. Celltrion Healthcare Co., 2017 U.S. Dist. LEXIS 16303 (D. Mass., Feb. 6, 2017)
infringement, Patent, damages, patentee, royalty, negotiations, parties, sales, lost profits, settlement