JANSSEN PRODUCTS, L.P. et al., Plaintiffs,
LUPIN LIMITED, et al., Defendants.
OPINION AND ORDER DENYING TEVA'S MOTION FOR LEAVE TO AMEND NON-INFRINGEMENT CONTENTIONS [D.E. 229]
STEVEN C. MANNION, Magistrate Judge.
This matter comes before the Court on the motion of Defendant Teva Pharmaceuticals USA, Inc. ("Teva") to amend its non-infringement contentions. ( See Docket Entry ("D.E.") 229, Teva's Motion to Amend). Plaintiff United States of America (the "Government") opposes the motion. ( See D.E. 232, the Government's Opposition). Plaintiffs Janssen Products, L.P., Janssen R&D Ireland, and G.D. Searle, LLC (collectively, "Janssen") neither consent to nor oppose Teva's motion. ( See D.E. 231, Janssen's Response). The Court has considered all of the submissions of the parties pursuant to Fed.R.Civ.P. 78 and, for the reasons set forth below, Teva's motion is DENIED.
II. BACKGROUND AND PROCEDURAL HISTORY
On March 16, 2011, Janssen filed its initial complaint [D.E. 1] against Teva, asserting infringement of its U.S. Patent No. 5, 843, 946 (the "946 patent") and U.S. Patent No. 7, 700, 645 (the "645 patent"). ( See D.E. 1, Complaint). Janssen then filed an amended complaint in the now consolidated Civil Action No. 11-1509 on March 24, 2011, adding U.S. Patent No. 6, 248, 775 (the "775 patent"). ( See D.E. 6, Civil Action No. 11-1509). Pursuant to the Court's scheduling orders, Teva served its preliminary non-infringement contentions for the 946, 645, and 775 patents on Janssen on November 18, 2011. ( See D.E. 229-1, Teva's Brief in Support, at *4). Since Teva served its preliminary contentions, Janssen asserted two more patents against Teva, U.S. Patent Nos. RE42, 889 (the "889 patent") and RE43, 596 (the "596 patent"), in Civil Action Nos. 12-3569 and 12-5358. Id. at *4-5. Janssen filed its complaint asserting infringement of the 889 patent on June 13, 2012, and its complaint asserting infringement of the 596 patent August 24, 2012. Since then, both of the aforementioned actions have been consolidated with the instant action by the Court. Id.
Teva served its non-infringement contentions for the 889 patent on August 7, 2012. ( See D.E. 229-1, Teva's Brief in Support of Motion). Pursuant to the Court's scheduling orders, Teva served its preliminary non-infringement contentions for the 946, 645, and 775 patents on Janssen on November 18, 2011. Id. at *6. Teva served its non-infringement contentions for the 889 patent on August 7, 2012. Id. at *5. On October 5, 2012, the Court consolidated the 596 patent case was with this action, and entered a schedule for contentions and claim construction disclosures in accordance with the Local Patent Rules. Id.
Janssen has asserted claims 24 and 25 of the 889 patent, and claims 7-12 of the 946 patent against Teva. Teva alleges that the asserted claims of the 889 patent are similar to the asserted claims of the 946 patent, noting that claim 25 of the 889 patent and claim 7 of the 946 patent would both "cover a pharmaceutical composition comprising (i) darunavir and (ii) a pharmaceutically acceptable carrier." ( See D.E. 229-1, Plaintiff's Brief in Support of Motion to Amend, at *6). In its non-infringement contentions for the 889 patent, Teva averred that its products do not infringe the asserted claims of the 889 patent because "Teva USA's ANDA products do not contain darunavir, but rather contain a solvate that is substantially different from darunavir." ( See D.E. 229-1, Teva's Brief in Support of Motion, at *6). Teva now alleges that, while preparing its non-infringement contentions for the 889 patent, it recognized a similar defense also applied to the asserted claims of the 946 patent. Id. Teva sent its proposed amended non-infringement contentions for the 946 patent to Janssen on October 10, 2012, and now seeks leave to amend its contentions to add this defense. Id.
With regard to the 506 patent, the Government asserted claims 1, 2, and 5-9 of the 506 patent against Teva on March 15, 2011. ( See D.E. 229-1, Teva's Brief in Support, at *6). Teva served its non-infringement contentions for the 506 patent on the Government on November 18, 2011. Id. Claim 1 of the 506 patent and the rest of the asserted claims all contain the limitation:
(ii) administering to the HIV-infected mammal an effective amount of a compound of the formula:
wherein X is oxygen, R5 is isobutyl, and Ar is substituted phenyl.
Id. at 7.
Teva argues that the Government has asserted that the genus of compounds depicted in claim 1 of the 506 patent includes darunavir, and therefore the Government has asserted that each of the asserted claims of the 506 patent includes the limitation of "administering" darunavir. Id. Teva asserts that it recognized during the exchange of claim construction disclosure that the Government may also dispute the construction of the term "administering, " and Teva amended its list of terms requiring construction in the Joint Claim Construction and Prehearing Statement filed on May 22, 2012 to include this term. Id. Teva proposes that "administering should be construed according to its "plain and ordinary meaning, which is to provide externally for the purpose of delivering into the body, " whereas the Government proposes that this term should be construed to mean "managing or supervising the execution or use of the claimed compound(s) of the 506 patent." Id.
Teva contends that under its proposed construction, administration of the ANDA products would not infringe the asserted claims of the 506 patent because the ANDA products do not contain darunavir, and Teva now seeks leave to amend its contentions to add this defense. Id. at 7-8. Janssen has filed a response stating that, while it does not consent to Teva's proposed amended non-infringement contentions, it does not oppose the amendment either. ( See D.E. 231, Janssen's Response). The ...