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BOEHRINGER INGELHEIM VETMEDICA v. SCHERING-PLOUGH

August 2, 2000

BOEHRINGER INGELHEIM VETMEDICA, INC., ET AL., PLAINTIFFS,
V.
SCHERING-PLOUGH CORPORATION AND SCHERING CORPORATION, DEFENDANTS.



The opinion of the court was delivered by: Ackerman, Senior District Judge.

OPINION

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.

A. Procedural Issues

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 Claim One of United States Letters Patent No. 5,476,778 is not invalid due to inequitable conduct practiced by Plaintiff before the United States Patent and Trademark Office; and it is further
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 Court stated:

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 appropriate time.

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.

That section provides:

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 ...


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