The opinion of the court was delivered by: Ackerman, Senior District Judge.
This matter comes before the Court on a motion filed by
Boehringer for a permanent injunction and by motions filed by
Schering Corp. and Schering-Plough Corp. (hereinafter
"Schering") for a judgment as a matter of law, a new trial and a
stay of any injunction during the pendency of these post-trial
motions. For the reasons set forth below, Boehringer's motion
for a permanent injunction is hereby granted, Schering's request
for a stay of that injunction is denied and as discussed below,
this Court seeks further guidance from Schering regarding its
post-trial motions. Therefore, in accord with this Opinion and
Order to be issued on this same date, this Court grants
Boehringer's request for a permanent injunction, denies
Schering's request for a stay pending the resolution of its
post-trial motions and enters judgment in favor of Boehringer.
This is one of many written opinions issued by this Court in
this case and the related case 1998-CV-5703. See Boehringer
Ingelheim v. Schering, 984 F. Supp. 239 (N.J. 1997) (hereinafter
"Boehringer I"); Boehringer Ingelheim v. Schering,
6 F. Supp.2d 324 (N.J. 1998) (hereinafter "Boehringer II");
Boehringer Ingelheim v. Schering-Plough, 68 F. Supp.2d 508, 536
(N.J. 1999) (hereinafter "Boehringer III"); Boehringer
Ingelheim v. Schering-Plough, 106 F. Supp.2d 667 (N.J. 2000)
(hereinafter "Boehringer IV"). Prior to trial on the issues
effecting Patent '778, this Court severed the issue of
inequitable conduct from the issues of obviousness and
infringement. The former, to be tried by this Court sitting
without a jury and the latter two issues, to be tried by a jury.
The jury trial was conducted from November 30, 1999 until
January 20, 2000 at which time the jury returned a verdict in
favor of Boehringer on the issues of obviousness and
infringement. Thereafter, this Court heard additional testimony
on the exclusive issue of whether Boehringer engaged in
inequitable conduct before the Patent Office. This Court issued
a written opinion finding that Schering failed to prove such
inequitable conduct by clear and convincing evidence. See
Boehringer IV, 106 F. Supp.2d 667. Accordingly, this Court
entered judgment on June 20, 2000 in favor of Boehringer.
On June 20th, this Court:
ORDERED that Judgment is entered in favor of
Plaintiff and against Defendants; and it is further
ORDERED that this Order does not close this
matter; and it is further
ORDERED that a status conference will be held
in this case before this Court on July 5, 2000 at 2
p.m.; and it is further
ORDERED that the Clerk of this Court shall
notify the Commissioner of Patents within thirty
(30) days in accordance with 35 U.S.C. § 290.
In the written opinion issued along with that Order, this
After carefully consideration [sic], for the reasons
stated below, this Court finds that Schering has
failed to prove that Boehringer engaged in
inequitable conduct that would invalidate the '778
Patent. Accordingly, since all substantive issues
have now been resolved in this matter, together with
an Order issued on this same date, final judgment
shall be entered in this matter in favor of
Boehringer. [Fn 1]
Fn 1. This Court also rejects Schering's oral motion for
judgment notwithstanding the verdict. The Court is aware that
Schering intends to move for a new trial pursuant to
Fed.R.Civ.P. 50(b). This Court will consider that motion at the
Boehringer IV, 106 F. Supp.2d at 668.
Within 10 days of that Order being entered, Schering moved for
a new trial pursuant to Rule 59 and for a judgment as a matter
of law pursuant to Rule 50. Meanwhile, Boehringer also moved for
a permanent injunction. Schering opposes Boehringer's request
for a permanent injunction and in turn, seeks a stay of any
injunction during the pendency of Schering's post-trial motions.
Boehringer has not yet responded to Schering's post-trial
motions arguing that such motions are premature because they
have been filed before "judgment" has been entered.
Boehringer contends that because no "judgment" as that term is
used in 28 U.S.C. § 1292(c)(2) has been filed, "Schering has
jumped the gun by filing three `post-trial' motions, and has
requested that the Court decide those motions before entry of
judgment." Id. at ___, 2000 WL 993622, pp. 1-2. Boehringer
builds on this foundation and argues that the "time for filing
of Schering's Rule 50 and 59 motions, by the language of the
Rules themselves, is triggered by entry of judgment," id. at
___, 2000 WL 993622, p. 2, which has not yet occurred in this
case. Schering, in turn, argues that the Court's June 20th Order
triggered the filing requirements of Rules 50 and 59, but that
in any event, it makes sense for this Court to consider its
post-trial motions contemporaneously with Boehringer's motion
for injunctive relief such that a stay should be granted to
allow for consideration of Schering's post-trial motions.
Although parties typically do not file post-trial motions
until entry of final judgment resolving all issues — liability
and damages — the Rules do not require a party to wait to file a
Rule 50 or Rule 59 until after the entry of such a "judgment."
Rule 50 states that a movant "may renew its request for judgment
as a matter of law by filing a motion no later than 10 days
after entry of judgment." Fed.R.Civ.Pro. 50(b).
Rule 59 states that "any motion for a new trial shall be filed no later
than 10 days after entry of the judgment." Fed.R.Civ.Pro.
59(b). These rules do not, by their terms, preclude the filing
of post-trial motions before "judgment" has been filed; they
merely require that once "judgment" has been filed, a party has
only 10 days to file the motions. The caselaw supports this
interpretation of Rules 50 and 59. See Jurgens v. McKasy,
905 F.2d 382, 386 (Fed.Cir. 1990) (holding that "ten day limit in
Rule 59 sets only a maximum period and does not nullify an
otherwise valid motion made before a formal judgment has been
entered."); 0. Hommel Co. v. Ferro Corp., 659 F.2d 340 (3d
Cir. 1981) (holding that district court improperly denied
Rule 50(b) motion filed after entry of final judgment because
previous judgment which did not resolve issue of attorney's fees
did not trigger Rule 50(b) filing requirements), cert. denied,
455 U.S. 1017, 102 S.Ct. 1711, 72 L.Ed.2d 134, reh'g denied,
456 U.S. 965, 102 S.Ct. 2047, 72 L.Ed.2d 491A (1982); Warner v.
Rossignol, 513 F.2d 678 (1st Cir. 1975) (court could consider
motion for new trial even though judgment had not been entered);
Garrett v. Blanton, 1993 WL 17697 (E.D.La. 1993) (Court could
sua sponte grant new trial under Rule 59(d) before a
Rule 59 "judgment" was entered); DeLong v. International Union,
850 F. Supp. 614, 618,
n. 19 (S.D.Ohio 1993) (motion for new trial may be filed even
though a court has not entered final judgment such that court
may rule on such a motion even though final judgment has not yet
been entered); Manos v. TWA, 324 F. Supp. 470 (N.D.Ill. 1971)
(where motion to amend judgment and for new trial was filed
before "judgment" was entered, court could consider motions
because 10-day rule is maximum filing requirement). But see
Hiebert Contracting Co. v. Trager, 274 F. Supp. 801 (Mass. 1967)
(dismissing without prejudice a Rule 59 motion filed before
judgment was entered or any findings on the issue of damages
were filed). Thus, even if the June 20th Order were not a
"judgment" within the meaning of Rules 50 and 59 as Boehringer
argues, Schering has not "jumped the gun" and this Court need
not dismiss Schering's motion as premature.
B. Boehringer's Motion for a Permanent Injunction
Thus, having concluded that a party may file a Rule 50 and/or
Rule 59 motion before "judgment" is entered such that this Court
may consider Schering's post-trial motions regardless of whether
the June 20th Order triggered the filing requirements contained
in those rules, it is this Court's task to decide whether the
equities of this case warrant the imposition of a permanent
injunction against Schering even during the pendency of
Schering's post-trial motions.
The starting point for this analysis is Section 283 of Title
35 of the United States Code.
The several courts having jurisdiction of cases under
this title may grant injunctions in accordance with
the principles of equity to prevent the violation of
any right secured by patent, on such terms as the
court deems reasonable.
35 U.S.C. § 283. As this section makes abundantly clear, the
right to an injunction is not automatic but is left to the
discretion of the district court after considering the equities
of the particular case. Roche Products, Inc. v. Bolar
Pharmaceutical Co., 733 F.2d 858, 866 (Fed.Cir. 1984), cert.
denied, 469 U.S. 856, 105 S.Ct. 183, 83 L.Ed.2d 117 (1984).
In the patent area, "it is the general rule that an injunction
will issue when infringement has been adjudged, absent a sound
reason for denying it." Richardson v. Suzuki Motor Co.,
868 F.2d 1226, 1247 (Fed.Cir. 1989), cert. denied, 493 U.S. 853,
110 S.Ct. 154, 107 L.Ed.2d 112 (1989); KSM Fastening Sys., Inc.
v. H.A. Jones Co., 776 F.2d 1522, 1524 (Fed.Cir. 1985); W.L.
Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281-83
(Fed.Cir. 1988). "Although the district court's grant or denial
of an injunction is discretionary depending on the facts of the
case, injunctive relief against an adjudged infringer is usually
granted." W.L. Gore, 842 F.2d at 1281 (internal citations
omitted); Richardson, 868 F.2d at 1247 (it is contrary to
property law to deny the patentee's right to exclude others from
use of his property); Trans-World Mfg. Corp. v. Al Nyman &
Sons, Inc., 750 F.2d 1552, 1564 (Fed.Cir. 1984) (exercise of
discretion cannot be arbitrary). While the right to exclude
others is an integral concept in property law, the district
court nonetheless has broad discretionary powers under the
patent statute to determine whether the facts of the case
warrant the entry of an injunction and to determine the scope of
such an injunction. Joy Technologies, Inc. v. Flakt, Inc.,
6 F.3d 770, 772 (Fed.Cir. 1993). An injunction is proper only to
the extent that it is granted to prevent violation of any right
secured by patent and may not be punitive. Id.
A district court in this situation must consider the equities
of the situation. These equities ...