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November 1, 2005.

APOTEX, INC. and APOTEX CORP., Defendants.

The opinion of the court was delivered by: WILLIAM BASSLER, District Judge


Plaintiffs Daiichi Pharmaceutical Co. Ltd., and Daiichi Pharmaceutical Corporation (collectively as "Daiichi" or "Plaintiffs") filed a motion in limine to preclude defendants Apotex, Inc. and Apotex Corp. (collectively as "Apotex" or "Defendants") from asserting an affirmative defense of failing to name the proper inventors of Daiichi's patent pursuant to 35 U.S.C. § 102(f).

For the reasons set forth below, Daiichi's motion is granted.


  Daiichi brought suit against Apotex alleging patent infringement of all seven claims of Daiichi's U.S. Patent No. 5,401,741 ("the '741 patent"), entitled a "Topical Preparation for Treating Otopathy." Daiichi now argues that Apotex did not sufficiently put Daiichi on notice of the defense that it is not entitled to the '741 patent for failure to name the proper inventors pursuant to 35 U.S.C. § 102(f). Section 102 states: "A person shall be entitled to a patent unless . . . (f) he did not himself invent the subject matter sought to be patented. . . ."

  Daiichi argues that section 102 provides an affirmative defense that must be pled in a way that sufficiently gives a plaintiff notice of the defense, and by failing to do so Apotex waived such defense. Furthermore, Daiichi contends that allowing Apotex to present evidence to that end not only unduly prejudices Daiichi but also thwarts the purpose of contention interrogatories.

  Apotex asserts that it raised the section 102(f) issue in its Amended Answer. Apotex also argues that Fed.R.Civ.P. 8(c) does not list 102(f) as an affirmative defense and, therefore, it need not be specifically pleaded. In addition, Apotex makes argues that Daiichi will not be prejudiced and was aware of the likelihood of the defense because of questioning during depositions. Moreover, Appotex argues Daiichi was in possession of documents that suggested the defense would be raised.*fn1


  A. Affirmative Defenses Under Rule 8(c)

  Rule 8(c) of the Federal Rules of Civil Procedure requires that "In a pleading to a preceding pleading, a party shall set forth affirmatively . . . any [] matter constituting an avoidance or affirmative defense. . . ." (Emphasis added.) The Rule itself does not list every affirmative defense. The fact that the defense under 35 U.S.C. § 102(f) is not provided for under Rule 8(c) does not mean that it falls outside the category of affirmative defenses; this is evident from the plain language of Rule 8(c). See e.g. Williams v. Ashland Engineering Co., Inc., 45 F.3d 588, 593 (1st Cir. 1995) (discussing preemption as an affirmative defense); Cornwall v. U.S. Const. Mfg. Inc., 800 F.2d 250, 252 (Fed. Cir. 1986) (discussing invalidity as an affirmative defense); Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1363 n. 6 (Fed. Cir. 2005) (discussing enforceability as an affirmative defense); Ray v. Kertes, 285 F.3d 287, 291-92 (3d Cir. 2002) (discussing exhaustion as an affirmative defense); Shechter v. Comptroller of City of New York, 79 F.3d 265, 270 (2d Cir. 1996) (discussing immunity as an affirmative defense); Kennan v. Dow Chemical Co., 717 F.Supp. 799, 808-09 (M.D.Fla. 1989) (discussing preemption as an affirmative defense).

  The issue for the Court is whether section 102(f) falls within the category of a matter constituting avoidance or an affirmative defense. "Generally speaking, the rule's reference to `an avoidance or affirmative defense' encompasses two types of defensive allegations: those that admit the allegations of the complaint but suggest some other reason why there is no right to recovery, and those that concern allegations outside of the plaintiff's prima facie case that the defendant therefore cannot raise by a simple denial in the answer." 5 CHARLES A. WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 1271 (3d ed. 2004). The argument underlying section 102(f), that a plaintiff is not entitled to recover because he is not the true inventor, falls well within the category of affirmative defenses considered by other courts as well as the first type of defensive allegations listed by Wright and Miller.

  B. Pleading Affirmative Defenses

  "Parties are generally required to assert affirmative defenses early in litigation, so they may be ruled upon, prejudice may be avoided, and judicial resources may be conserved." Robinson v. Johnson, 313 F.3d 128, 134 (3d. Cir. 2002). The Rule technically requires that such a defense be pleaded in the answer. Id. at 135. The purpose behind Rule 8(c) is to put "plaintiff on notice well in advance of trial that defendant intends to present a defense in the nature of an avoidance." Marino v. Otis Engineering Corp., 839 F.2d 1404, 1408 (10th Cir. 1988) (internal citations omitted). "A defendant should not be permitted to `lie behind a log' and ambush a plaintiff with an unexpected defense." Perez v. United States, 830 F.2d 54, 57 (5th Cir. 1987) (internal citations omitted).

  In order to assert an affirmative defense under Rule 8(c) the pleading party must at least put plaintiff on reasonable notice of that defense. While some courts have considered harmless a technical failure to comply with Rule 8(c), others have taken into account the stage of the proceeding in deciding whether fair notice was satisfied. See Venters v. City of Delphi, 123 F.3d 956, 968-69 (7th Cir. 1997) (holding that defendants' statute of limitations defense, submitted after an exhaustive discovery process and a trial ...

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