Case: 1:16-cv-00651 Document #: 102 Filed: 05/08/18 Page 1 of 4 PageID #:2607
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`MOTION FOR PARTIAL SUMMARY JUDGMENT ON PRIOR SALE
`
`
`
`C.A. Nos. 1:16-cv-00651
` 1:17-cv-07903
`
`Hon. Rebecca R. Pallmeyer
`
`
`
`Plaintiff,
`
`Defendant.
`
`HOSPIRA, INC.
`
`
`
`
`
`FRESENIUS KABI USA, LLC
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mindful of the fact that trial is soon approaching, Fresenius Kabi files this summary
`
`judgment motion on a narrow legal issue: whether there were prior sales and an offer for sale for
`
`dexmedetomidine (“dexmed”)-in-glass products. This is a legal issue, and one that can be
`
`addressed before trial begins. Because Hospira itself succeeded on the same issue in another,
`
`unrelated case this year, we expected them to agree there had been a sale. But they did not.
`
`There are three reasons to consider the motion now:
`
`First, the prior sale and prior offer issues are legal issues. The focus of this motion is
`
`whether transactions involving the dexmed regulatory submission and dexmed-in-glass products
`
`constitute prior sales and an offer for sale, which is a contract interpretation issue that is a
`
`question of law for this Court. The Medicines Co. v. Hospira, Inc., 881 F.3d 1347, 1350 (Fed.
`
`Cir. 2018); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002). In
`
`particular, in 1994 a company called Orion sold an Investigational New Drug application to
`
`Abbott related to dexmed-in-glass, which included an offer to sell glass ampoules of dexmed. In
`
`2004, Abbott then sold the same IND to Hospira, the plaintiff in this case. Hospira did not file
`
`its own patents until 2012. These facts are not disputed, nor are the terms of the contracts
`
`involved in those transactions. And if those transactions meet the legal test for prior sale and
`
`
`
`
`

`

`Case: 1:16-cv-00651 Document #: 102 Filed: 05/08/18 Page 2 of 4 PageID #:2608
`
`prior offer for sale, then they can be used to show the patents are invalid. Pfaff v. Wells Elecs.,
`
`Inc., 525 U.S. 55, 67 (1998).
`
`In fact, in a very recent case on an unrelated drug product, Hospira itself persuasively laid
`
`the groundwork for demonstrating that a drug product is the subject of an offer for sale as a
`
`matter of law. See The Medicines Co. v. Hospira, Inc., 881 F.3d 1347 (Fed. Cir. 2018). In that
`
`case, Hospira and the same attorneys that represent it in this case successfully showed that a drug
`
`was offered for sale by relying on the same contractual terms found in the agreements at issue in
`
`this case. Id. at 1349–52.
`
`Second, the motion is intended to eliminate two issues and the need for testimony from
`
`up to four witnesses at trial. By addressing the legal issue of whether there was a prior sale and
`
`offer for sale, then the IND and the product described therein will be used at trial to show
`
`invalidity. The ultimate issue of invalidity will still be contested and remain an issue for trial.
`
`But at least the legal issues of whether the IND and dexmed glass ampules were the subjects of a
`
`sale or offer for sale—involving testimony of going through contract terms—will be avoided.
`
`As stated above, there will be potentially four fewer trial witnesses if the legal issue is
`
`addressed by summary judgment. These witnesses would otherwise review and consider
`
`contract terms involving the IND documents and related press releases. One of them, an expert
`
`that Hospira recently disclosed for this issue, is a law professor who will likely address UCC
`
`provisions and opine about whether they apply in this case. If this issue is not resolved by
`
`summary judgment, it will involve motions in limine, in order to eliminate Hospira’s purely legal
`
`testimony about contract interpretation.
`
`Third, the prior sale/prior offer issue will need to be addressed whether before or after
`
`trial. Providing the Court with the benefit of additional time to consider the briefing is all the
`
`2
`
`
`

`

`Case: 1:16-cv-00651 Document #: 102 Filed: 05/08/18 Page 3 of 4 PageID #:2609
`
`more important here, where the parties discussed in court a stipulated deadline for a generic
`
`launch if an opinion has not been issued. (D.I. 91, 1:16-cv-00651; D.I. 34, 1:17-cv-07903.)
`
`Briefing the issue now will provide the Court with additional time to consider this separate legal
`
`issue, and in view of several recent Federal Circuit decisions.
`
`
`
`Dated: May 8, 2018
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Imron Aly
`Imron T. Aly
`Kevin M. Nelson
`Joel M. Wallace
`Emily M. Peña
`Tara L. Kurtis
`233 South Wacker Drive, Suite 7100
`Chicago, Illinois 60606
`(312) 258-5500
`ialy@schiffhardin.com
`knelson@schiffhardin.com
`jwallace@schiffhardin.com
`epena@schiffhardin.com
`tkurtis@schiffhardin.com
`
`Ahmed M.T. Riaz (pro hac vice)
`666 Fifth Avenue, 17th Floor
`New York, NY 10103
`(212) 753-5000
`ariaz@schiffhardin.com
`
`Attorneys for Defendant Fresenius Kabi USA,
`LLC
`
`3
`
`

`

`Case: 1:16-cv-00651 Document #: 102 Filed: 05/08/18 Page 4 of 4 PageID #:2610
`
`CERTIFICATE OF SERVICE
`
`
`
`I, Tara Kurtis, an attorney at the law firm of Schiff Hardin LLP, hereby certify that on
`
`May 8, 2018, I caused a true and correct copy of the foregoing MOTION FOR PARTIAL
`
`SUMMARY JUDGMENT ON PRIOR SALE to be electronically served on counsel of record
`
`via the Court’s CM/ECF system.
`
`
`
`/s/ Tara Kurtis
`Tara Kurtis
`
`
`
`
`
`
`
`