United States District Court, D. New Jersey
May 10, 2005.
PHARMACEUTICAL RESOURCES, INC. and PAR PHARMACEUTICALS, INC., Plaintiffs,
ROXANE LABORATORIES, INC., Defendant.
The opinion of the court was delivered by: DICKINSON DEBEVOISE, Senior District Judge
Presently before the Court is Plaintiffs', Pharmactical
Resources, Inc. and Par Pharmaceutical, Inc. (together "Par"),
motion, pursuant to FED. R. CIV. P. 59(e) and L. CIV. R. 7.1(g),
requesting the Court to reconsider its denial of Plaintiffs'
motion to dismiss for failure to state a claim, two counterclaims
and two affirmative defenses raised in Defendant's, Roxane
Laboratories, Inc. ("Roxane"), Amended Answer, Affirmative
Defenses and Counterclaims ("Answer"). For the reasons set forth
below, the Court will deny Par's motion for reconsideration.
The facts relevant to Par's motion to dismiss and to the
present motion for reconsideration were recounted in the Court's
March 31, 2005 Opinion ("Opinion") that accompanied the
challenged Order; and there is no need to repeat them here. This
action arises out of alleged patent infringement. The subject of
the particular action which Par seeks to have reconsidered are
two affirmative defenses and two counterclaims alleging the
unenforceability of the `318 and `320 patents by reason of Par's
Par moved to dismiss requesting the Court to hold that Roxane
failed to state a claim within its affirmative defenses and counterclaims alleging Par
engaged in inequitable conduct. In its Opinion and Order, the
Court denied Par's motion. The Court found that based on the
evidence contained in the record, further discovery was necessary
before dismissing the subject affirmative defenses and
In New Jersey, a motion for reconsideration is governed by L.
CIV. R. 7.1(g), which provides in part: "There shall be served
with the notice a brief setting forth concisely the matters or
controlling decisions which counsel believes the Judge or
Magistrate Judge has overlooked." L. CIV. R. 7.1(g).
Whether to grant a motion for reconsideration is wholly within
the district court's discretion. Croker v. Boeing Co.,
662 F.2d 975 (3d Cir. 1981); Artista Records, Inc. v. Flea World, Inc.,
356 F.Supp.2d 411, 415 (D.N.J. 2005); Williams v. Sullivan,
818 F.Supp. 92, 93 (D.N.J. 1993). The standard a party must meet to
succeed on a motion for reconsideration is quite high; and
success on the motion is to correct manifest errors of law or
fact, to present newly discovered evidence, Harsco Corp. v.
Zlotnicki, 779 F.2d 906, 909 (3d Cir. 1985), or where facts or
legal authority were presented but overlooked. Croker v. Boeing
Co., 662 F.2d; Artista Records, Inc. v. Flea World, Inc.,
356 F.Supp.2d at 415; Williams v. Sullivan, 818 F.Supp. at 93.
Motions for reconsideration are granted sparingly, Bowers v.
NCAA, 130 F.Supp. 2d 610 (D.N.J. 2001), and only when
dispositive factual matters or controlling decisions of law were
brought to the court's attention but not considered. McGarry v.
Resolution Trust Corp., 909 F. Supp. 241, 244 (D.N.J. 1995). A
motion for reconsideration may be granted if: (1) an intervening
change in the controlling law has occurred; (2) evidence not previously
available has become available; or (3) it is necessary to correct
a clear error of law or prevent manifest injustice. N. River
Ins. Co. v. CIGNA Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir.
1995). On a motion for reconsideration, it is improper for a
party to "ask the court to rethink what it had already thought
through rightly or wrongly," In re Tutu Wells Contamination
Litig., 162 F.R.D. 81, 88 (D.V.I. 1995), and "in the absence of
newly discovered, non-cumulative evidence, the parties should not
be permitted to reargue previous rulings made in the case."
Oritani Sav. & Loan Ass'n v. Fidelity & Deposit Co. of
Maryland, 744 F.Supp. 1311, 1314 (D.N.J. 1990).
In its moving brief, Par neither alleges an intervening change
in controlling law, nor does it allege facts that were not
previously available to them. Instead, Par's motion is based on
the third ground. Specifically, Par asserts:
It is clear that the fulcrum of the Court's
conclusion that the "circumstances described" were
sufficient to defeat Par's Motion, was its following
[A] significant event is that Par learned that its
`261 application was assigned to a different
examiner, Examiner George and that thereupon Par
filed a preliminary amendment in the `261 application
which added to that application claims substantially
similar to the broad claims Examiner Kulkosky had
finally rejected in the `241 application. (Opinion at
(Par Brief at 1).
Par is correct that Roxane did not allege that Par knew of
Examiner George's appointment before it filed its Second
Preliminary Amendment, and it has filed the Declaration of its
attorney identifying Patent Office records that fail to provide
evidence that Par learned that Examiner George had been assigned
to the case before the filing of that Amendment. The Court will
stretch a point and consider the new evidence, even though such
evidence is not usually considered on a motion for reargument.
Roxane argues that despite the lack of evidence in the Patent
Office records other evidence may ultimately show that Par
learned of Examiner George's assignment before filing its Second
Preliminary Amendment. That argument is too speculative. It is
apparent that the Court read too much into the pleadings, and the
sentence upon which Par bases its motion should not have appeared
in the Opinion. That being said, Par errs when it asserts that
the sentence constituted the "fulcrum" of the Court's conclusion.
The "fulcrum" of the Court's conclusion was "that at no time
during the prosecution of the `261 application did Par advise
Examiner George of Examiner Kulkosky's prior final rejection of
substantially similar claims," and "that at no time during the
prosecution of the `823 application did Par advise Examiner
George of Examiner Kulkosky's prior final rejection of
substantially similar claims . . ." (Opinion at 4-5). The
centrality of this failure to the Court's denial of Par's motion
should be apparent from I) the chronological recital of the
prosecution of the applications before Examiners Kulkosky and
George (Opinion at 3-5) and ii) the discussion of the cases
relevant to the issue whether failure to disclose a critical
determination of another examiner could form the basis for a
finding of materiality and intent (Opinion at 8-12).
While the "[o]ne episode in the midst of the sequence of
events" (Opinion at 12) would be a factor that could point to an
intent to deceive, its elimination in no way alters the Court's
basic conclusion that "[t]he sequence of events as alleged in
the affirmative defenses and counterclaims is sufficient to
preclude granting Par's motion to dismiss for failure to state a
claim. According to Roxane's allegations Par prosecuted
substantially similar claims before two examiners without
informing one of them that the other had discharged broader
claims." (Opinion at 12) (emphasis added).
Par's motion for reconsideration will be denied. Plaintiffs
have not shown an intervening change in the controlling law,
newly available evidence, or that the Court overlooked
dispositive factual matters or controlling decisions of law. The
Court's Opinion did not depend upon the unalleged and unsupported
factor to which the Court referred. For the reasons set forth
herein, Par's motion for reconsideration is denied. An
appropriate order will be entered.
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