United States District Court, D. New Jersey, Camden Vicinage
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
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.
RENÉE MARIE BUMB, UNITED STATES DISTRICT JUDGE:
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
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.
PROCEDURAL HISTORY & BACKGROUND
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].
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.
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).
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).
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.
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