Case 1:20-cv-01630-RGA-JLH Document 65 Filed 08/03/21 Page 1 of 5 PageID #: 1272
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiffs,
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`v.
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`AMARIN PHARMA, INC., AMARIN
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`PHARMACEUTICALS IRELAND
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`LIMITED, MOCHIDA
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`PHARMACEUTICAL CO., LTD.,
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`HIKMA PHARMACEUTICALS USA INC.,
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`HIKMA PHARMACEUTICALS PLC, AND
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`HEALTH NET, LLC,
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`Defendant.
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`____________________________________ )
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`C.A. No. 20-1630-RGA-JLH
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`MEMORANDUM ORDER
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`Plaintiffs Amarin Pharma, Inc., Amarin Pharmaceuticals Ireland Limited (collectively,
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`“Amarin”), and Mochida Pharmaceutical Co., Ltd. (“Mochida”) filed this suit against Defendants
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`Hikma Pharmaceuticals USA Inc., Hikma Pharmaceuticals PLC (collectively, “Hikma”), and
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`Health Net, LLC (“Health Net”). Plaintiffs allege that Hikma and Health Net have each induced
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`infringement of U.S. Patent Nos. 9,700,537 (the ’537 patent), 8,642,077 (the ’077 patent), and
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`10,568,861 (the ’861 patent) under 35 U.S.C. § 271(b). Health Net has moved to sever the claims
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`alleged against it from those alleged against Hikma. For the reasons stated below, Health Net’s
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`motion to sever is DENIED without prejudice to its ability to request a separate trial at a later date.
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`1.
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`Plaintiffs’ allegations against Hikma and Health Net are described in detail in my
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`Report and Recommendation on Defendants’ pending motions to dismiss, which I am issuing
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`contemporaneously with this order.
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`2.
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`Federal Rule of Civil Procedure 21 permits district courts to sever any claim against
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`a party and proceed with the claims separately. Fed. R. Civ. P. 21. Health Net argues that the
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`Court should sever Plaintiffs’ claims against Health Net from those alleged against Hikma because
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`Health Net and Hikma were improperly joined as defendants in the first place.
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`3.
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`Accused infringers can only be joined as defendants in a single action if the
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`requirements set forth in 35 U.S.C. § 299(a) are met. That statute provides, in pertinent part:
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`(a) Joinder of Accused Infringers.—With respect to any civil
`action arising under any Act of Congress relating to patents, . . .
`parties that are accused infringers may be joined in one action as
`defendants . . . , or have their actions consolidated for trial, only if—
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`(1) any right to relief is asserted against the parties jointly,
`severally, or in the alternative with respect to or arising out
`of the same transaction, occurrence, or series of transactions
`or occurrences relating to the making, using, importing into
`the United States, offering for sale, or selling of the same
`accused product or process; and
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`(2) questions of fact common to all defendants . . . will arise
`in the action.
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`35 U.S.C. § 299(a). Health Net says that § 299(a)(1) prohibits Plaintiffs from joining Health Net
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`and Hikma as defendants in this action. Plaintiffs say it does not.
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`4.
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`Having carefully reviewed and considered the parties’ briefing and oral argument,
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`I think it’s fair to say that the heart of the disagreement between the parties is as follows. Health
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`Net says, in essence, that the statute’s requirement that the right to relief arise out of “the same
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`transaction, occurrence, or series of transactions or occurrences,” § 299(a)(1), means that the
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`actions of the defendants that are alleged to constitute the inducing conduct must be factually
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`overlapping. According to Health Net, there is no such overlap here because Hikma is alleged to
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`induce infringement based on its generic product label and press releases that encourage the use
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`of Hikma’s product in an infringing way, and Health Net is alleged to induce infringement based
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`on its drug formulary and prior authorization process that encourage the use of Hikma’s product
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`in an infringing way. (See, e.g., D.I. 49 (Health Net’s Reply Br.) at 6 (“Amarin’s requested relief
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`2
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`. . . relates to the transactions Amarin contends constitute indirect infringement. Because there is
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`no overlap there, joinder is not allowed.”).) In contrast, Plaintiffs contend that their respective
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`claims for relief against Hikma and Health Net satisfy the statute because they are each alleged to
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`induce the same act of direct infringement, that is, the dispensing and use of Hikma’s product for
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`the CV indication. (See D.I. 43 (Plaintiffs’ Ans. Br.) at 8 (“[T]he same series of transactions or
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`occurrences gives rise to Amarin’s requested relief from infringement: the dispensing and use of
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`Hikma’s generic for the infringing CV Indication . . . .”).)
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`5.
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`I agree with Health Net that, if the Court only considers the acts alleged to be
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`inducing, there is little overlap in the allegations against Health Net and Hikma. But I am not
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`persuaded that Health Net’s interpretation of the statute is correct. The statute refers to a “right to
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`relief . . . arising out of the same transaction, occurrence, or series of transactions or occurrences
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`relating to the . . . using . . . of the same accused . . . process.” 35 U.S.C. § 299(a)(1). That
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`language appears to be broad enough to encompass situations, like this one, where both defendants
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`are alleged to induce the same act of direct infringement of a method patent. Health Net cites the
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`Federal Circuit’s opinion in In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012), but that case did
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`not involve defendants who were each alleged to induce the same act of direct infringement. Id.
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`at 1352 (assessing joinder of independent defendants who offered similar, but distinct, accused
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`products).1
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`1 I reject Health Net’s apparent suggestion that joinder is improper under § 299(a)(1) unless
`the defendants are alleged to be “jointly and severally liable.” (D.I. 32 at 8 n.6; D.I. 49 at 5.) The
`statute, by its terms, permits joinder of defendants regardless of whether “relief is asserted . . .
`jointly, severally, or in the alternative.” 35 U.S.C. § 299(a)(1).
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`6.
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`Subsection 299(a)(2) is also satisfied, as there is no serious dispute that the action
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`will involve some “questions of fact common to all defendants,” for example, questions relating
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`to direct infringement and validity.
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`7.
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`But just because claims against two defendants may be joined under 35 U.S.C.
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`§ 299(a) does not mean that they should remain joined and not be severed. As Health Net rightly
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`points out, “joinder may still be refused ‘in the interest of avoiding prejudice and delay, ensuring
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`judicial economy, or safeguarding principles of fundamental fairness.’” Westinghouse Air Brake
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`Techs. Corp. v. Siemens Mobility, Inc., 330 F.R.D. 143, 147-48 (D. Del. 2019) (quoting EMC
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`Corp., 677 F.3d at 1356).
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`8.
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`Health Net argues that it will be prejudiced by joint pretrial proceedings and a joint
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`trial. I am not persuaded by Health Net’s argument as it relates to pretrial proceedings. Even if I
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`thought that severance were appropriate at this stage (or necessitated by 35 U.S.C. § 299(a)), I
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`would still informally coordinate pretrial proceedings for the two cases as they involve the same
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`patents, the same alleged act of direct infringement, and overlapping discovery. In other words,
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`even if the claims are not formally consolidated or ultimately tried together, there are at least some
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`overlapping factual and legal issues that will be addressed more efficiently by coordinating fact
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`and expert discovery and claim construction.2
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`9.
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`Health Net may well be right that it would be inappropriate to try these cases
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`together. But I don’t need to make that determination now. Health Net may reraise its motion to
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`sever at the same time case dispositive motions are due. The Court will be in a better position at
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`2 A Scheduling Order contemplating coordinated pretrial proceedings has already been
`entered. (See D.I. 50.)
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`that time to understand what issues need to be tried and to make a decision about whether a joint
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`trial is appropriate.
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`Accordingly, Health Net’s motion to sever is DENIED. Health Net may move for a
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`separate trial at the same time the parties file their case dispositive motions.
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`Dated: August 3, 2021
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`___________________________________
` Jennifer L. Hall
` UNITED STATES MAGISTRATE JUDGE
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`5
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