United States District Court, D. New Jersey
OPINION & ORDER
STANLEY R. CHESLER, District Judge.
This matter comes before the Court on the motion for a preliminary injunction by Plaintiff Roxane Lanoratories, Inc. ("Roxane") against Defendants Camber Pharmaceuticals Inc. and InvaGen Pharmaceuticals Inc. (collectively, "Defendants"). This Court held oral argument on this motion on July 31, 2014. For the reasons stated below, the motion will be denied.
This case arises from a patent infringement dispute involving a pharmaceutical, calcium acetate capsules. Roxane owns U.S. Patent No. 8, 563, 032 (the "'032 patent"), directed to a pharmaceutical calcium acetate formulation; Roxane markets a generic calcium acetate capsule product. Defendants are pharmaceutical manufacturers who market competing generic calcium acetate capsule products. In March of 2014, Roxane filed a Complaint alleging patent infringement in the United States District Court for the Southern District of Ohio. Defendants moved to dismiss the Complaint or, alternatively, to transfer the case to the District of New Jersey. Roxane opposed the motion and also moved for a preliminary injunction, seeking to enjoin Defendants from marketing their generic calcium acetate capsule products. The Ohio Court granted the motion to transfer and transferred the case to the District of New Jersey, where the parties completed briefing on the preliminary injunction motion.
APPLICABLE LEGAL STANDARDS
I. Preliminary Injunction
"The grant of a preliminary injunction under 35 U.S.C. § 283 is within the discretion of the district court." Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378 (Fed. Cir. 2006). "A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest." Winter v. NRDC, Inc., 129 S.Ct. 365, 374 (2008).
As to the requirement that the movant establish that he is likely to succeed on the merits, the Federal Circuit has held:
[T]he patentee seeking a preliminary injunction in a patent infringement suit must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent. In assessing whether the patentee is entitled to the injunction, the court views the matter in light of the burdens and presumptions that will inhere at trial....
Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009) (citation omitted). "An accused infringer can defeat a showing of likelihood of success on the merits by demonstrating a substantial question of validity or infringement." Trebro Mfg. v. FireFly Equip., LLC, 748 F.3d 1159, 1165 (Fed. Cir. 2014). "A preliminary injunction should not issue if an alleged infringer raises a substantial question regarding either infringement or validity, i.e., the alleged infringer asserts an infringement or invalidity defense that the patentee has not shown lacks substantial merit." AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1050 (Fed. Cir. 2010).
At trial, the plaintiff bears the burden of proving infringement by a preponderance of the evidence. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008).
I. Roxane has not demonstrated that it is likely to succeed on the merits.
Roxane first argues that this Court should preclude Defendants from relying on their noninfringement and invalidity arguments, contending that Defendants failed to disclose them previously, in violation of this district's Local Patent Rules. Roxane has overlooked a key provision in the Local Patent Rules: while these rules do establish a structure for the disclosure of infringement and invalidity contentions by both sides, L. Pat. R. 3.1 specifies that the trigger for these obligations is the initial scheduling conference. No initial scheduling conference has been held in this case, and Defendants have not failed to comply with their disclosure obligations under the Local Patent Rules.
Additionally, to the extent that Roxane contends that Defendants failed to provide appropriate discovery while the case was pending in Ohio, the Court notes that Plaintiff made no request before that court to compel discovery. Indeed, Roxane's motion for expedited discovery remained undecided until this Court decided that it was moot, in light of the current posture of ...