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Novo Nordisk A/S and Novo Nordisk, Inc v. Mylan Pharmaceuticals

December 1, 2010

NOVO NORDISK A/S AND NOVO NORDISK, INC., PLAINTIFFS,
v.
MYLAN PHARMACEUTICALS, INC., DEFENDANT.



The opinion of the court was delivered by: Wolfson, United States District Judge:

NOT FOR PUBLICATION

OPINION

Presently before the Court is a Motion by Defendant Mylan Pharmaceutical Inc. ("Mylan") for Attorney Fees arising out of an infringement action filed by Plaintiffs Novo Nordisk Inc. and Novo Nordisk A/S ("Nordisk"). On March 31, 2010, this Court issued an Opinion and Order ("Opinion") dismissing the infringement action filed by Plaintiffs. Specifically, this Court found that the infringement action was not ripe for review, and, as a result, held that the Court lacked jurisdiction over the action pursuant to Fed. R. Civ. P. 12(b)(1). By its Motion, Defendant now seeks an Order that both declares it a prevailing party and awards attorney fees pursuant to the Patent Act, 35 U.S.C. § 285 ("the Act"). The Court has considered the parties' moving, opposition and reply briefs as well as letter submissions and Defendant's Amicus Curiae brief. For the reasons that follow, the Court denies Defendant's motion.

I. BACKGROUND

The Court recounted the factual history of this case and, specifically the patent infringement claim, in its Opinion issued on March 31, 2010. Thus, the Court will only briefly recite the relevant facts herein and will incorporate the facts set forth in its earlier Opinion for purposes of this motion.

On May 20, 2009, Nordisk filed a patent infringement suit under 35 U.S.C. § 271(e)(2), alleging that the filing of Mylan's ANDA for a generic version of oral repaglinide tablets infringed on U.S. Patent No. 6,677,358 (the "'358 patent"). Mylan moved to dismiss the Complaint on June 11, 2009. On June 26, 2009, while Mylan's initial motion to dismiss was pending, Nordisk filed an Amended Complaint (the "First Amended Complaint") and alleged that "[b]ased on a May 19, 2009 discussion with the FDA, Novo Nordisk understood that the FDA would not permit any ANDA filer for generic repaglinide to rely upon a section viii statement in connection with claim 4 of the '358 patent." First Amended Complaint ¶ 23. Nordisk further asserted that the "import of this ruling is that, in view of the amended use code for PRANDIN®, the FDA will not permit any ANDA filer for generic repaglinide to omit information from its labeling regarding the use of repaglinide in combination with metformin." Id. ¶ 24. Nordisk averred that as a direct and necessary consequence, Mylan's section viii statement in connection with claim 4 of the '358 patent "is of no force and effect, and its proposed labeling will be rejected by the FDA." Id. Accordingly, Nordisk asserted a cause of action for infringement under § 271(e)(2)(A).

Mylan subsequently filed a second motion to dismiss. In this motion, Mylan asserted that the Court lacked jurisdiction over Nordisk's assertion that the ANDA infringes claim 4 of the '358 patent. This Court, after thorough review and analysis, issued an Opinion finding that it lacked jurisdiction over the infringement action as Mylan did not seek approval in its ANDA to practice claim 4 and thus, there was no threat of infringement. Specifically, this Court held that Nordisk's claim for infringement was not ripe for review. As a result, the Court dismissed the First Amended Complaint.

In the underlying patent litigation, Mylan was represented by attorneys from two law firms: Perkins Coie, LLP and Saiber, LLP. Defendant now seeks reimbursement from Plaintiffs for the fees paid for services rendered by both firms. From the amounts listed on invoices submitted to Mylan from both firms, Defendant seeks $243,975 in attorneys fees for services related to work performed prior to the research, drafting, and filing of the instant motion for fees. Specifically, Mylan seeks to recover $214,837 for services provided by the attorneys from Perkins Coie, LLP, and $29,138 for services provided by Saiber, LLP.*fn1 Brief in Support of Mylan Pharmaceutical Inc.'s Motion for Attorney Fees ("Def's Br.") at 6; Declaration of Ms. Shannon M. Bloodworth in Support of Mylan Pharmaceutical Inc.'s Motion for Attorney Fees ("Bloodworth Dec.") at ¶ 8; Declaration of Arnold B. Calmann in Support of Mylan Pharmaceuticals Inc.'s Motion for Attorney Fees ("Calmann Dec.") at ¶¶ 5,6. Defendant additionally seeks reimbursement for attorney's fees relating to the filing of the instant motion, the amount of which remains unspecified by both law firms.

II. DISCUSSION

A. The "American Rule" and 35 U.S.C. § 285

Absent statutory authority to the contrary, "[i]n the United States, the prevailing litigant is ordinarily not entitled to collect a reasonable attorneys' fee from the loser." Alyeska Pipeline Service Co. v. Wilderness Society, 421 U.S. 240, 247, 95 S.Ct. 1612, 44 L.Ed.2d 141 (1975). Among the statutory exceptions to what is commonly known as the "American Rule" is 35 U.S.C. § 285, which provides that, in patent cases, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Section 285 serves two purposes: (1) to compensate the prevailing party for its expense in prosecuting or defending the suit, and (2) to deter clearly unwarranted infringement suits. See Automated Business Cos. V. NEC America, Inc., 202 F.3d 1353, 1355 (Fed. Cir. 2000). However, section 285 only provides an award of attorney fees in limited circumstances and it is not intended to be an "ordinary thing in patent suits." Forest Laboratories, Inc. v. Abbot Laboratories, 339 F.3d 1324, 1329 (2d Cir. 2003 (quoting Rohm & Haas Co. V. Chrystal Chem. Co., 736 F.2d 688, 690-91 (Fed. Cir. 1984)(quoting S.Rep. No. 79-1503 (1946))). Indeed, pursuant to the narrow exception embodied by section 285 "courts have exercised their inherent equitable power to make whole a party injured by an egregious abuse of the judicial process . . . . Congress enacted Section 285 to codify in patent cases the "bad faith" equitable exception to the American Rule . . . . Recognizing the good faith/bad faith distinction, Congress expressly limited such awards to "exceptional cases." Sun-Tek Indus., Inc. v. Kennedy Sky Lites, Inc., 929 F.2d 676, 687 (Fed. Cir. 1991)(internal quotation marks and citations omitted)(emphasis added).

A trial court undertakes a three-step inquiry to adjudicate a request for attorney fees under section 285. First, the court must determine that the party requesting attorney fees is the "prevailing party" in the action. See 35 U.S.C. § 285. Second, the court examines whether there is clear and convincing evidence that the case is exceptional. Evident Corp. v. Church & Dwight Co., Inc., 399 F.3d 1310, 1315 (Fed. Cir. 2005). "Exceptional cases usually feature some material, inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct . . . misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil Procedure 11, or like infractions." Serio-US Indus., v. Plastic Recovery Techs., Corp., 459 F.3d 1311, 1321-22 (Fed. Cir. 2006) (ciations moitted). "Absent misconduct in the litigation or in securing the patent, a trial court may only sanction the patentee if . . .the litigation is [both] brought in subjective bad faith and . . . objectively baseless." Id. at 1322 (citing Prof'l Real Estate Investors v. Columbia Pictures Indus., 508 U.S. 49, 60-61 (1993). Finally, the Court may exercise discretion in awarding any attorneys fees. The Court may "weigh intangible as well as tangible factors: the degree of culpability of the infringer, the closeness of the question, litigation behavior, and any other factors whereby fee shifting may serve as an instrument of justice." Serio-US, 459 F.3d at 1322.

1. Prevailing Party Requirement

In the instant matter, Mylan argues that it is entitled to attorney fees as the prevailing party because this Court dismissed Nordisk's First Amended Complaint finding that it would not support a cause of action for infringement. In response, Nordisk contends that Mylan is not a prevailing party under section 285 since the Court did not ...


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