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Reckitt Benckiser LLC v. Amneal Pharmaceuticals LLC

United States District Court, D. New Jersey, Camden Vicinage

October 25, 2019

RECKITT BENCKISER LLC, Plaintiff,
v.
AMNEAL PHARMACEUTICALS LLC, et al., Defendants.

          SAUL EWING ARNSTEIN & LEHR LLP By: Charles M. Lizza, Esq.; David L. Moses, Esq.; Sarah Ann Sullivan, Esq.; William C. Baton, Esq. Attorneys for Plaintiff Reckitt Benckiser LLC

          STONE CONROY LLC By: Rebekah R. Conroy, Esq. GOLDBERG SEGALLA LLP By: Ronald M. Daignault, Esq.; Richard Juang, Esq. Attorneys for Defendant Amneal Pharmaceuticals LLC

          WINDELS MARX LANE & MITTENDORF, LLP By: Stuart D. Sender, Esq.; Anandita Vyakarnam, Esq. BUDD LARNER, PC By: Michael H. Imbacuan, Esq. Attorneys for Defendants Dr. Reddy's Laboratories, Inc. and Dr. Reddy's Laboratories, Ltd.

          OPINION

          RENÉE MARIE BUMB, UNITED STATES DISTRICT JUDGE:

         Plaintiff Reckitt Benckiser LLC (“Plaintiff”) brought this patent infringement case against Defendants Amneal Pharmaceuticals LLC (“Amneal”), and Dr. Reddy's Laboratories, Inc. and Dr. Reddy's Laboratories, Ltd. (the “DRL Defendants” or “DRL”)(collectively, “Defendants”), pursuant to 35 U.S.C. § 271(e)(2)(A) and §§ 271(a), (b) and (c). On August 22, 2017, this Court ruled that Defendants' products did not infringe the two patents at issue. Reckitt Benckiser LLC v, Amneal Pharm. LLC, 276 F.Supp.3d 261 (D.N.J. 2017), aff'd, 737 Fed.Appx. 538 (Fed. Cir. 2018). Defendants now move for attorney fees under 35 U.S.C. § 285, contending that this case is “exceptional” based on Reckitt's conduct throughout litigation. For the reasons stated herein, the Court will DENY Defendants' request for attorney fees.

         I. PROCEDURAL HISTORY & BACKGROUND

         The case involved Reckitt's Mucinex® product, an extended-release guaifenesin tablet used as an expectorant that thins and loosens mucus and relieves chest congestion. Reckitt initially alleged that Amneal's generic 600 mg and 1200 mg guaifenesin sustained-release tablets (“Amneal's ANDA products”) would infringe U.S. Patent Nos. 6, 372, 252 (the “'252 Patent”), 6, 955, 821 (the “'821 Patent”), and 7, 838, 032 (the “'032 Patent”). Similarly, Reckitt initially alleged that DRL's generic 600 mg and 1200 mg guaifenesin and pseudoephedrine hydrochloride sustained-release tablets (“DRL's ANDA Products”) would infringe the '252, '821, and '032 Patents. After the filing of the Complaints, Reckitt dismissed its claims under the '252 Patent as to all Defendants [Docket Nos. 64, 65] and its claims under the '821 Patent against Defendant DRL [Docket No. 64].

         At the heart of the dispute was whether Defendants' ANDA Products had two distinct formulations, an immediate release formulation (“IR formulation”) and a sustained release formulation (“SR formulation”). Reckitt contended that they did. Defendants countered that their ANDA products were single formulation matrix tablets and therefore did not infringe the two patents.

         By Opinion and Order entered August 22, 2017, this Court agreed with Defendants and ruled that their products did not infringe the two patents at issue. See Reckitt Benckiser LLC v, Amneal Pharm. LLC, 276 F.Supp.3d 261 (D.N.J. 2017). On September 10, 2018, the Court of Appeals for the Federal Circuit affirmed the decision. See Reckitt Benckiser LLC v. Amneal Pharm. LLC, 737 Fed.Appx. 538 (Fed. Cir. 2018).

         The case before this Court was not Reckitt's first challenge against a manufacturer of a generic Mucinex®; in fact, Reckitt had brought at least three prior patent infringement cases against generic manufacturers. See Reckitt Benckiser, Inc. v. Watson Labs., Inc., No. 09-60609 (S.D. Fla. 2009); Adams Respiratory Therapeutics, Inc. et al v. Perrigo Co., No. 07-993 (W.D. Mich. 2007); Reckitt Benckiser LLC v. Aurobindo Pharma Ltd., No. 14-1203 (D.Del. 2014).

         In Watson and Perrigo the district courts concluded that a single formulation matrix tablet, like the tablets manufactured by the Defendants in this case, contained only one single portion of guaifenesin. See Reckitt Benckiser, Inc. v. Watson Labs., Inc., No. 09-cv-60609, slip op. (S.D.Fla. Feb. 18, 2011), aff'd, 430 Fed.Appx. 871 (Fed. Cir. 2011); Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 2012 WL 90188 (W.D. Mich. Jan. 11, 2012). In Aurobindo, pending at the time this Court heard the case, the Court construed the claims of the same patents at issue here as requiring two “distinct” structural formulations of guaifenesin. See Reckitt Benckiser LLC v. Aurobindo Pharma Ltd., 239 F.Supp.3d 822, 829-830 (D. Del. 2017). Because Aurobindo's product did not contain two distinct formulations, the Court granted summary judgment as to the defendant. Id. This Court adopted the Aurobindo Court's construction and questioned Reckitt what, “at the end of the day, ” it meant for the instant case to go forward. See Transcript of March 15, 2017, Declaration of Rebekhah R. Conroy “Conroy Decl.” at 4:6-8). Reckitt responded, in sum and substance, that it would present testimony that was not presented to the Aurobindo Court.

         II. DISCUSSION

         Defendants now seek attorney fees under 35 U.S.C. § 285, contending that this case is “exceptional” based on Reckitt's conduct throughout litigation. Defendants concede that there is no basis for an exceptional case ruling prior to this Court's adoption of the Aurobindo Court's claim construction, and so, the Court begins its exceptional case analysis from the point of its claim construction.

         A. ...


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