John E. Flaherty, Esquire, McCarter & English, LLP, Newark, New Jersey, and Denise L. Loring, Esquire, Michael P. Kahn, Esquire, Marc A. Cavan, Esquire, Richard T. McCaulley, Esquire, Lewis Fogel, Esquire, Ropes & Gray LLP, New York, New York, And Mariam Koodhary, Esquire, Inhouse Counsel, Attorneys for Defendants/AstraZeneca, LP and AstraZeneca AB, Katherine Ann Escanlar, Esquire, Saiber LLC, Newark, New Jersey, and William A. Rakoczy, Esquire, Amy D. Brody, Esquire, Tara M. Raghavan, Esquire, Heinz J. Salmen, Esquire, Natasha White, Esquire, Rakoczy Molino Mazzochi Siwik LLP, Chicago, Illinois, Eric I. Abraham, Esquire, Christina L. Saveriano, Esquire, Hill Wallack LLP, Princeton, New Jersey and Richard J. Basile, Esquire, David W. Aldrich, Esquire, Benjamin J. Lehberger, Esquire, Erin R. Woelker, Esquire, Alyson J. DiLena, Esquire, St. Onge Steward Johnson & Reens, LLC, Inhouse Counsel Attorneys for Defendants/Counterclaim' Plaintiffs Apotex, Inc. and Apotex Corp. Sheila Raftery Wiggins, Esquire, Duane Morris LLP, Newark, New Jersey, and Taras A. Gracey, Esquire, Mark H. Remus, Esquire, Abby Parsons, Esquire, Steptoe & Johnson LLC, Attorneys for Defendant/Counterclaim-Plaintiff Sandoz, Inc. Attorneys for Defendant/Counterclaim Plaintiffs Breath Limited and Watson Laboratories, Inc.
RENÉE MARIE BUMB, District Judge.
Plaintiffs AstraZeneca AB and AstraZeneca LP ("AstraZeneca") and defendants Apotex, Inc., and Apotex Corp. ("Apotex") have filed motions asking the Court to amend or correct its Opinion and Order of Judgment, dated April 1, 2013. [Dkt. Ents. 744, 801.] For the reasons that follow, AstraZeneca's motion is GRANTED and Apotex's motion is GRANTED IN PART and DENIED IN PART. Additionally, defendant Sandoz, Inc. ("Sandoz") has filed a letter advising the Court that its decision not to resolve certain counterclaims of invalidity, in light of its finding of non-infringement, may hamper the progression of the pending appeal. [Dkt. Ent. 819.] The Court therefore DISMISSES these counterclaims without prejudice for the reasons set forth below.
Federal Rule of Civil Procedure 59(e) permits a party to file a motion to alter or amend a judgment "no later than 28 days after the entry of the judgment." In the District of New Jersey, Local Civil Rule 7.1(i) governs motions for reconsideration. Agostino v. Quest Diagnostics, Inc., Civ. No. 04-4362 , 2010 WL 5392688, *5 (D.N.J. Dec. 22, 2010) (citing Bryan v. Shah , 351 F.Supp.2d 295, 296 n.2 (D.N.J. 2005)). Local Rule 7.1(i) "creates a procedure by which a court may reconsider its decision upon a showing that dispositive factual matters or controlling decisions of law were overlooked by the court in reaching its prior decision." Id . (citing Bryan , 351 F.Supp.2d at 296 n.2).
The "purpose of a motion for reconsideration is to correct manifest errors of law or fact or to present newly discovered evidence." Harsco Corp. v. Zlotnicki , 779 F.2d 906, 909 (3d Cir. 1985), cert. den'd, 476 U.S. 1171 (1986) (internal citation omitted). Reconsideration is appropriate if: (1) there has been an intervening change in the controlling law; (2) evidence not available when the Court issued the subject order has become available; or (3) it is necessary to correct a clear error of law or fact or to prevent manifest injustice. Max's Seafood Cafe v. Quinteros , 176 F.3d 669, 677 (3d Cir. 1999) (internal citations omitted).
Apotex asks the Court to reconsider its ruling on certain kit claims and method claims. AstraZeneca asks the Court to clarify its Order of Judgment to specify the asserted claims. In a letter dated May 30, 2013, Sandoz advised the Court that certain counterclaims remain pending, thus calling into question whether the Court's Order of Judgment constitutes a final judgment for purposes of appeal. The Court considers each issue in turn.
1. Kit Claims
This is a patent infringement action, which culminated in a two-month long bench trial in November and December of 2012. After extensive post-trial briefing, the Court issued a 143-page Bench Opinion and Order of Judgment on April 1, 2013, resolving the case in favor of the defendants. AstraZeneca LP v. Breath Ltd., Civ. No. 08-1512, 2013 WL 1385224, *4, n.11 (D.N.J. Apr. 3, 2013) (issued under temporary seal on April 1, 2013). AstraZeneca then filed an emergent motion for an injunction pending appeal to preclude the defendants from launching their generic drug products. The Court denied that motion, but in consideration of the significance of the interests at stake, afforded AstraZeneca a ten-day injunction to seek the same relief from the Federal Circuit. On May 24, 2013, the Federal Circuit granted the injunction, without prejudice to the ultimate disposition of the case by a merits panel.
In a footnote within the April 1st Opinion, the Court addressed the parties' dispute as to whether certain kit claims and counterclaims remained in the case. The Court found that AstraZeneca had withdrawn these kit claims and issued covenants not to sue, which appeared to moot the defendants' counterclaims for a declaratory judgment that the kit claims are invalid. The Court retained its power to revisit the issue upon motion by the defendants, however.
Apotex now argues that AstraZeneca could not withdraw the kit claims from this action because the Court's preliminary injunction decision and the Federal Circuit's opinion affirming that decision firmly determined the invalidity of these claims. Apotex contends, in the alternative, that even if the preliminary injunction decisions did not determine the invalidity of the kit claims, Apotex's counterclaims remained in the case, because AstraZeneca's covenants not to sue did not strip the Court of its jurisdiction over them. Apotex further argues that it proved the invalidity of the kit claims twice, at the preliminary injunction stage and at trial.
Article III of the U.S. Constitution grants federal courts the authority to adjudicate "Cases" and "Controversies." "[A]n actual controversy' must exist not only at the time the complaint is filed, but through all stages' of the litigation." Already, LLC v. Nike, Inc., ___ U.S. ___ , 133 S.Ct. 721, 726 (2013) (citations omitted). "A case becomes moot - and therefore no longer a Case' or Controversy' for purposes of Article III - when the issues presented are no longer live or the parties lack a legally cognizable interest in the outcome." Id . (internal quotations omitted).
At the outset of this litigation, both parties had standing to pursue their claims. AstraZeneca had standing to sue because Apotex was allegedly infringing its rights under patent law. Apotex had standing to file its counterclaim because AstraZeneca was allegedly pressing an invalid patent to prevent Apotex's legitimate business activity. Id. at 727 (citing MedImmune v. Genentech, Inc. , 549 U.S. 118, 126-37 (2007) for the proposition that "a genuine threat of enforcement of intellectual property rights that inhibits commercial activity may support standing"). At the preliminary injunction stage, this Court found the kit claims invalid. The Federal Circuit affirmed. AstraZeneca LP v. Apotex, Inc. , 623 F.Supp.2d 579, 588-92 (D.N.J. 2009), aff'd, 633 ...