Orexo AB v. Actavis Elizabeth LLC

Orexo AB v. Actavis Elizabeth LLC

Opinion

 [*373]  MEMORANDUM OPINION

December 11, 2019

Wilmington, Delaware

/s/ Colm F. Connolly

COLM F. CONNOLLY

UNITED STATES DISTRICT JUDGE

Plaintiffs Orexo AB and Orexo US, Inc. (collectively, "Orexo") filed this Hatch-Waxman patent suit against Defendants Actavis Elizabeth LLC, Actavis Pharma, Inc., Teva Pharmaceuticals USA, Inc., and Teva Pharmaceutical Industries, Ltd. (collectively, "Actavis"). Orexo alleged in its complaint that Actavis's generic versions of the anti-opioid-addiction drugs Suboxone® and Subutex® directly and indirectly infringed [**2]  claim 2 of U.S. Patent No. 8,454,996 (the "#996 patent"). D.I. 1. The Court held a five-day trial, after which the jury found that Actavis did not induce or contribute to infringement.¹ D.I. 274. Consistent with the jury's verdict, this Court entered judgment for Actavis. D.I. 279.

Orexo has moved pursuant to Federal Rule of Civil Procedure 59(a) for a new trial "on the issues of infringement, willfulness,  [*374]  and damages." D.I. 283. Orexo argues a new trial is warranted because (1) I erroneously precluded it from presenting at trial the fact that Judge Sue L. Robinson had ruled in a previous patent case (the "Zubsolv® case") that the #996 patent was not invalid and was infringed by a generic version of another anti-opioid-addiction drug, Zubsolv®, D.I. 284 at 3-10;² and (2) I erroneously "excluded the introduction of Orexo's patents and published patent applications (other than the [#]996 patent)," id at 10, and "other publications," id. at 14.

I. BACKGROUND

A. Zubsolv®, Suboxone®, and Subutex®

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