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Medpointe Healthcare Inc. v. Hi-Tech Pharmacal Co.

January 22, 2007

MEDPOINTE HEALTHCARE INC., PLAINTIFF,
v.
HI-TECH PHARMACAL CO., INC., DEFENDANT.
MEDPOINTE HEALTHCARE INC., PLAINTIFF,
v.
MORTON GROVE PHARMACEUTICALS, INC., DEFENDANT.



The opinion of the court was delivered by: Hughes, U.S.M.J.

MEMORANDUM OPINION

This matter is before the Court upon the Motion of Defendant Hi-Tech Pharmacal Co., Inc., ("Hi-Tech"), for Consolidated Trial on Liability of Civil Action 03-5550 and 04-1686 Pursuant to FED. R. CIV. P. 42(a) and to Bifurcate Trials on Damages and Alleged Willfulness of Infringement Pursuant to FED. R. CIV. P. 42(b). Defendant Morton Grove ("Morton Grove") joined Hi-Tech's Motion to consolidate and bifurcate on July 24, 2006. Plaintiff Medpointe Healthcare Inc. ("Plaintiff") opposes the Motion. Both parties requested that the Court defer argument on this motion until the pending summary judgment motions were decided.

Plaintiff filed two separate actions for patent infringement. The first action was filed against Hi-Tech on November 25, 2003, and the second action was filed against Morton Grove on April 13, 2004. The two actions, which claim that Hi-Tech and Morton Grove have infringed the same patent, have been consolidated for discovery and case management purposes only. Defendants Hi-Tech and Morton Grove now seek to consolidate the two actions solely for a trial on liability issues and to hold separate trials on the issues of damages and alleged willful infringement. The Court reviewed the written submissions of the parties and conducted oral argument on January 22, 2007. For the reasons that follow, Hi-Tech's and Morton Grove's Motion for a Consolidated Trial on Liability and to Bifurcate Trials on Damages and Alleged Willfulness of Infringement is granted.

I. BACKGROUND AND PROCEDURAL HISTORY

A. Medpointe v. Hi-Tech

Plaintiff MedPointe is a New Jersey corporation headquartered in Somerset, New Jersey that develops, markets and sells branded prescription pharmaceuticals. (Edick Hi-Tech Decl. ¶ 3). Plaintiff is the owner-assignee of the '206 Patent, issued on July 9, 2002, which is directed to a certain combination of pharmaceuticals to be administered for the symptomatic relief of cough. (See Dkt. no. 03-5550, entry no. 1). Plaintiff sells its prescription anti-cough medication under the trade name Tussi-12D. Id.

Hi-Tech is a competitor of Plaintiff and has manufactured and distributed a generic suspension, which has the same component actives in the same dosage amounts as Tussi-12D. (See Seltzer Tr. at 8-26). On November 25, 2003, Plaintiff filed suit against Hi-Tech, accusing Hi-Tech of willful infringement of U.S. Patent No. 6,417,206 ("the '206 Patent"). (See Dkt. no. 03-5550, entry no. 1). Plaintiff, who possesses exclusive rights to the '206 Patent, brought this action to stop Hi-Tech from marketing in the United States generic copies of the prescription anti-cough medication Tussi-12D. Id.

In December 2003, Plaintiff sought, and this Court granted, a temporary restraining order and a preliminary injunction. (See Dkt. no. 03-5550, entry no. 2, 6, 25, 26). Hi-Tech appealed this decision, and in December 2004, the injunction was vacated by the Federal Circuit based on Hi-Tech having raised a substantial question of invalidity based upon obviousness. Medpointe Healthcare Inc. v. Hi-Tech Pharmacal Co., 115 F. Appx. 76 (Fed. Cir. 2004).

On June 13, 2006, Hi-Tech filed a motion for summary judgment. (See Dkt. no. 03-5550, entry no. 87). Also on June 13, 2006, Medpointe filed two motions for summary judgment: (1) Motion for Summary Judgment of No Patent Misuse and No Unclean Hands; and (2) Motion for Summary Judgment of No Inequitable Conduct. (See Dkt. no. 03-5550, entry no. 88 and 89). Oral argument on the motions for summary judgment were heard by Judge Mary L. Cooper on November 30, 2006. (See Dkt. no. 03-5550, entry no. 119). On December 21, 2006, Judge Cooper entered a Memorandum Opinion and Order denying Hi-Tech's motion for summary judgment and withdrawing as moot Medpointe's two motions for summary judgment. (See Dkt. no. 03-5550, entry no. 120 and 121).

B. Medpointe v. Morton Grove

Morton Grove is a Delaware corporation and a competitor of Plaintiff. (See Dkt. no. 04-1686, entry no. 1). On April 13, 2004, Plaintiff filed an action against Morton Grove as defendant, accusing it of willful infringement of the '206 Patent and seeking to prevent Morton Grove from marketing a generic version of Tussi-12D. (See Dkt. no. 04-1686, entry no. 1). The two actions were consolidated for discovery and other pretrial proceedings only on February 22, 2005. (Pl.'s Opp. Br. at 1). At this stage in the litigation, discovery has ended and the cases are prepared for trial. (Hi-Tech Br. at 3; Pl.'s Opp. Br. at 1).

On June 13, 2006, Medpointe filed two motions for summary judgment: (1) Motion for Summary Judgment of No Patent Misuse and No Unclean Hands; and (2) Motion for Summary Judgment of No Inequitable Conduct. (See Dkt. no. 04-1686, entry no. 60 and 61). Oral argument on Medpointe's motions were heard before Judge Cooper on November 30, 2006, at the same time that argument was heard on the summary judgment motions in Medpointe's case against Hi-Tech. (See Dkt. no. 04-1686, entry no. 95). On December 20, 2006, the Court entered an order Dismissing as Withdrawn Plaintiff's motion for summary judgment regarding patent misuse and unclean hands. (See Dkt. no. 04-1686, entry no. 97).

C. Present Motion

On July 17, 2006, Hi-Tech filed the present motion for a consolidated trial of the actions against Hi-Tech and Morton Grove on liability and to bifurcate trials on damages and alleged willfulness of infringement. (See Dkt. no. 03-5550, entry no. 104). The parties requested that the Court defer hearing argument on this motion until after a decision on the summary judgment motions was entered. Hi-Tech and Morton Grove have each stipulated that the generic copies of Plaintiff's Tussi-12D suspension product infringe the '206 Patent. (Pl.'s Opp. Br. at 5). Therefore, the issues remaining for the jury are (1) whether Hi-Tech's or ...


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