Case 1:14-cv-01453-LPS Document 104 Filed 04/12/16 Page 1 of 4 PageID #: 2105
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`MEDA PHARMACEUTICALS INC. and
`CIPLA LTD.,
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`C.A. No. 14-1453-LPS
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`STIPULATED ORDER
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`Plaintiffs,
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`v.
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`APOTEX INC. and APOTEX CORP. ,
`
`
`Defendants.
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`
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`WHEREAS this matter having come before the Court upon the joint stipulation and
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`application of Plaintiffs Meda Pharmaceuticals Inc. (“Meda”) and Cipla Ltd. (“Cipla”)
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`(collectively, “Plaintiffs”) and Defendants Apotex Inc. and Apotex Corp. (collectively, “Apotex”
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`or “Defendants”);
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`WHEREAS Cipla is the owner of the U.S. Patent Nos. 8,163,723 (“the ’723 patent”),
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`8,168,620 (“the ’620 patent”), and 9,259,428 (“the ’428 patent”);
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`WHEREAS Meda is the exclusive licensee in the United States of the ’723, ’620,
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`and ’428 patents;
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`WHEREAS on December 2, 2014, Plaintiffs filed a Complaint against Apotex, alleging
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`that Apotex’s submission of Abbreviated New Drug Application (“ANDA”) No. 207712 to the
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`U.S. Food and Drug Administration (“FDA”), which included a Paragraph IV certification with
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`respect to the ’723 and ’620 patents, and the generic product described in ANDA No. 207712
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`would infringe the ’723 and ’620 patents;
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`WHEREAS on December 23, 2014, Apotex filed an Answer and Counterclaims, denying
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`Plaintiffs’ allegations and asserting patent non-infringement and invalidity;
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`MEDA PHARMACEUTICALS INC. and
`CIPLA LTD.,
`
`C.A. No. 14-1453-LPS
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`STIPULATED ORDER
`
`Plaintiffs,
`
`v.
`
`
`
`
`
`
`APOTEX INC. and APOTEX CORP. ,
`
`
`Defendants.
`
`
`
`WHEREAS this matter having come before the Court upon the joint stipulation and
`
`application of Plaintiffs Meda Pharmaceuticals Inc. (“Meda”) and Cipla Ltd. (“Cipla”)
`
`(collectively, “Plaintiffs”) and Defendants Apotex Inc. and Apotex Corp. (collectively, “Apotex”
`
`or “Defendants”);
`
`WHEREAS Cipla is the owner of the U.S. Patent Nos. 8,163,723 (“the ’723 patent”),
`
`8,168,620 (“the ’620 patent”), and 9,259,428 (“the ’428 patent”);
`
`WHEREAS Meda is the exclusive licensee in the United States of the ’723, ’620,
`
`and ’428 patents;
`
`WHEREAS on December 2, 2014, Plaintiffs filed a Complaint against Apotex, alleging
`
`that Apotex’s submission of Abbreviated New Drug Application (“ANDA”) No. 207712 to the
`
`U.S. Food and Drug Administration (“FDA”), which included a Paragraph IV certification with
`
`respect to the ’723 and ’620 patents, and the generic product described in ANDA No. 207712
`
`would infringe the ’723 and ’620 patents;
`
`WHEREAS on December 23, 2014, Apotex filed an Answer and Counterclaims, denying
`
`Plaintiffs’ allegations and asserting patent non-infringement and invalidity;
`
`
`
`
`
`
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`Case 1:14-cv-01453-LPS Document 104 Filed 04/12/16 Page 2 of 4 PageID #: 2106
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`WHEREAS on July 13, 2015, Plaintiffs served their disclosure of asserted claims under
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`the Local Patent Rules, asserting claims 1-4, 7, 8, 10-18, and 20-28 of the ’723 patent and claims
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`1-13, 15-18, 21, 22, 24-26, 28, 29, 31, 33, 35-47 of the ’620 patent;
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`WHEREAS on August 10, 2015, Apotex served its non-infringement contentions,
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`alleging that it does not infringe the claims asserted in Plaintiffs’ disclosure of asserted claims
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`because they are invalid;
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`WHEREAS the parties filed their Joint Claim Construction Chart on October 22, 2015,
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`and claim construction is ongoing for two claim terms;
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`WHEREAS on February 26, 2016, Plaintiffs filed an Amended Complaint adding the
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`newly-issued ’428 patent to the case and asserting that the generic product described in ANDA
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`No. 207712 would infringe the ’723, ’620, and ’428 patents;
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`WHEREAS on March 1, 2016, Plaintiffs served their disclosure of additional asserted
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`claims, asserting claims 2, 3, 8, 10-16, 18-26, and 28-30 of the ’428 patent. Plaintiffs also
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`reduced the total number of asserted claims to 40 claims, asserting in total claims 7, 8, 11, 14, 20,
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`21, and 23-28 of the ’723 patent, claims 4, 29, 42-44, and 47 of the ’620 patent, and claims 2, 3,
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`8, 10-16, 18-26, and 28-30 of the ’428 patent;
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`IT IS HEREBY STIPULATED AND AGREED, by the parties through their
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`undersigned counsel, subject to the approval of the Court:
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`1)
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`Apotex’s submission of ANDA No. 207712, including a Paragraph IV
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`certification with respect to the ’723 and ’620 patents, literally infringes all of the claims asserted
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`at the time of trial (“Asserted Claims”), regardless of the construction of the disputed claim
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`terms, except that this stipulation does not apply to claims 12 and 25 of the ’428 patent under 35
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`U.S.C. § 271(e)(2)(A) to the extent that those claims are valid and enforceable;
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`
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` 2
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`Case 1:14-cv-01453-LPS Document 104 Filed 04/12/16 Page 3 of 4 PageID #: 2107
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`2)
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`The proposed generic product defined by ANDA No. 207712 would literally
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`infringe the Asserted Claims, with the exception of claims 12 and 25 of the ’428 patent, under 35
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`U.S.C. § 271(a), regardless of the construction of the disputed claim terms, if commercially
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`made, used, offered for sale, or sold within the United States, or commercially imported into the
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`United States, to the extent that those claims are valid and enforceable;
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`3)
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`This Stipulated Order relates solely and exclusively to the issue of infringement of
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`the Asserted Claims, and it expressly does not relate to whether the Asserted Claims are valid
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`and/or enforceable. While this Stipulated Order is dispositive of the issues addressed herein,
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`nothing in this Stipulated Order relates to, prejudices, precludes, or otherwise impacts either
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`party’s right or ability to fully litigate any other issue, claim, or defense in this action in this
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`Court or on appeal.
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`4)
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`This Stipulated Order is applicable only for purposes of this action and any appeal
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`of this action, and it cannot be used by any party for any purpose in any other lawsuit or
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`proceeding. This Stipulated Order is applicable only to the Asserted Claims of the ’723, ’620,
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`and ’428 patents, with the exception of claims 12 and 25 of the ’428 patent, and does not apply
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`to any unasserted claims of the ’723, ’620, and ’428 patents or to the claims of any other patent
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`that has issued or may issue in the future, even if it shares a common priority application with the
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`’723, ’620, and ’428 patents.
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`5)
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`Plaintiffs have agreed to limit fact discovery depositions only to the depositions of
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`Wan Jiang, a Rule 30(b)(6) deposition of Apotex, if necessary, and the personal deposition of
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`any Rule 30(b)(6) designee. Any other fact discovery related to issues of infringement will be
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`limited to claims 12 and 25 of the ’428 patent.
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` 3
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`Case 1:14-cv-01453-LPS Document 104 Filed 04/12/16 Page 4 of 4 PageID #: 2108
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`6)
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`Each party shall bear its own fees and costs, including any attorneys’ fees, in
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`connection with the issues mooted or resolved by this Stipulated Order.
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`
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`
`
`/s/ Andrew C. Mayo
`
`
`
`Steven J. Balick (#2114)
`John G. Day (#2403)
`Andrew C. Mayo (#5207)
`ASHBY & GEDDES
`500 Delaware Ave., 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`sbalick@ashby-geddes.com
`jday@ashby-geddes.com
`amayo@ashby-geddes.com
`
`Attorneys for Plaintiffs Meda
`Pharmaceuticals Inc. and Cipla Ltd.
`
`
`
`/s/ Dominick T. Gattuso
`
`
`
`Dominick T. Gattuso (# 3630)
`PROCTOR HEYMAN ENERIO LLP
`300 Delaware Avenue, Suite 200
`Wilmington, DE 19801
`(302) 472-7300
`dgattuso@proctorheyman.com
`
`Attorneys for Defendants Apotex Inc.
`and Apotex Corp.
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`Of Counsel:
`
`Dennies Varughese
`Uma N. Everett
`Rami Bardenstein
`Dallin G. Glenn
`Josephine J. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX
`PLLC
`1100 New York Ave., N.W., Suite 800
`Washington, DC 20005-3934
`(202) 371-2600
`
`Of Counsel:
`
`Charles B. Klein
`Ilan Wurman
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006
`(202) 282-5000
`cklein@winston.com
`iwurman@winston.com
`
`George C. Lombardi
`Samuel S. Park
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, Illinois 60601-9703
`(312) 558-5600
`glombardi@winston.com
`spark@winston.com
`
`It is SO ORDERED this ____ day of __________, 2016.
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`
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`__________________________________________
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`
`
`Chief Judge
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` 4
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