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`HOSPIRA, INC.,
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`Plaintiff,
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`C.A. No. 1:16-cv-00651
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`Honorable Rebecca Pallmeyer
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 1 of 7 PageID #:2387
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`v.
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`FRESENIUS KABI USA, LLC
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`Defendant.
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`JOINT MOTION AND MEMORANDUM IN SUPPORT OF LOCAL RULE 40.4
`MOTION FOR REASSIGNMENT OF RELATED CASE
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`Plaintiff Hospira, Inc. and Defendant Fresenius Kabi USA, LLC (collectively, “the
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`Parties”), jointly request that the Court, pursuant to Local Rule 40.4, grant their request to
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`reassign to this Court the case captioned Hospira, Inc. v. Fresenius Kabi USA, LLC, No. 17-cv-
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`7903, (“Hospira II”), currently pending before Judge Thomas M. Durkin. In support of this
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`Motion, the Parties state as follows:
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`Reassigning Hospira II to this Court is appropriate because the instant case, Hospira, Inc.
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`v. Fresenius Kabi USA, LLC, No. 1:16-cv-00651 (“Hospira I”), and Hospira II meet the
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`conditions for reassignment in Local Rule 40.4(b).
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`Hospira I and Hospira II both involve Hospira’s allegations that Fresenius Kabi’s
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`submission of ANDA No. 208129 for a generic version of Hospira’s Precedex Premix product
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`constitutes infringement of certain of Hospira’s patents listed in the Orange Book under NDA
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`No. 21-038. The patents identified in Hospira II are part of the same family and share the same
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`specification and certain claim limitations as the patents asserted in Hospira I.
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 2 of 7 PageID #:2388
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`Aside from asserting similar patents, the overall legal questions in Hospira I and
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`Hospira II are identical: whether Fresenius Kabi infringed the asserted patents listed in the
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`Orange Book, and whether those patents are invalid. Therefore, matters such as discovery and
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`claim construction very likely overlap. Substantial judicial time and resources will be saved if
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`this Court hears both cases.
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`I.
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`BACKGROUND
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`A.
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`The Hospira I Case
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`On January 15, 2016, Hospira filed a complaint accusing Fresenius Kabi of infringing
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`U.S. Patent Nos. 8,242,158 (the“’158 patent”); 8,338,470 (the “’470 patent”); 8,455,527 (the
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`“’527 patent”); and 8,648,106 (the “’106 patent”) (collectively, “Hospira I Patents”). The ’158,
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`’470, and ’106 patents each claim ready to use liquid pharmaceutical compositions of
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`dexmedetomidine, and the ’527 patent claims a method of administering a ready to use liquid
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`pharmaceutical composition of dexmedetomidine. The Hospira I patents all trace their lineage
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`back to U.S. Patent Application No. 13/343,672, and the specifications for all four patents are
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`essentially the same. The Hospira I patents are listed in the Orange Book under NDA No. 21-038
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`covering Hospira’s Precedex products.
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`In its complaint, Hospira alleged that Fresenius Kabi committed an act of infringement
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`under 35 U.S.C. § 271(a)-(c), (e)(2) by filing ANDA No. 208129 with the FDA to market a
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`generic version of Hospira’s ready to use Precedex Premix product prior to the expiration of the
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`Hospira I patents. On January 19, 2016, Fresenius Kabi filed counterclaims asserting that the
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`Hospira I patents were invalid.
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`B.
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`The Hospira II Case
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`On November 1, 2017, Hospira filed another complaint related to Fresenius Kabi’s filing
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`of ANDA No. 208129 for a generic version of Precedex Premix based on a newly issued patent.
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`2
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 3 of 7 PageID #:2389
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`See Exhibit 1. In this complaint, Hospira alleges infringement under 35 U.S.C. § 271(a)-(c),
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`(e)(2) of the newly-issued U.S. Patent No. 9,616,049 (“the ’049 patent”). Like the patents in
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`Hospira I, the ’049 patent claims ready to use liquid pharmaceutical compositions of
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`dexmedetomidine. The ’049 patent is likewise a continuation of Patent Application No.
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`13/343,672, and has essentially the same specification as the Hospira I patents. The ’049 patent
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`is also listed in the Orange Book under NDA No. 21-038 covering Hospira’s Precedex products.
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`On December 1, 2017, Fresenius Kabi filed its answer and counterclaims asserting that
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`the ’049 patent and U.S. Patent No. 9,320,712 (“the ’712 patent”) were invalid and not infringed.
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`See Exhibit 2. The ’712 patent is also listed in the Orange Book for NDA No. 21-038, and is
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`part of the same patent family as the ’049 patent and the Hospira I patents. The ’712 patent also
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`shares the same specification and certain claim limitations as the other asserted patents. To date,
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`Hospira has not asserted infringement of the ’712 patent against Fresenius Kabi.
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`II.
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`ARGUMENT
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`A.
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`Hospira I and Hospira II Are Related Under Local Rule 40.4(a)
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`Local Rule 40.4 provides for the filing of a “motion for reassignment” in order to place
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`related cases before one judge. Taylor-Holmes v. Office of Cook Cnty. Pub. Guardian, 503 F.3d
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`607, 609 (7th Cir. 2007). Local Rule 40.4(a) provides that two or more civil cases may be
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`“related” if one of the following conditions is met:
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`1. the cases involve the same property;
`2. the cases involve some of the same issues of fact or law;
`3. the cases grow out of the same transaction or occurrence; or
`4. in class action suits, one or more of the classes involved in the cases is or are the
`same.
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`L.R. 40.4(a). Any one of these grounds is sufficient. See Global Patent Holdings, LLC v. Green
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`Bay Packers, No. 00 C 4623, 2008 WL 1848142, at *3 (N.D. Ill. Apr. 23, 2008).
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`3
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 4 of 7 PageID #:2390
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`Hospira I and Hospira II meet numerous of these grounds. The two cases involve
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`identical parties and accused product. The issues of fact and law substantially overlap. In both
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`cases, Hospira alleges that Fresenius Kabi’s filing of ANDA No. 208129 constitutes
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`infringement of patents listed in the Orange Book under Hospira’s NDA No. 21-038 covering
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`Precedex Premix products, and Fresenius Kabi alleges that those patents are invalid. The patents
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`in both cases are in the same family and share nearly the same specifications.
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`B.
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`The Conditions For Reassignment Under Local Rule 40.4(b) Are Satisfied
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`In addition to establishing that the two cases are related, Local Rule 40.4 requires that
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`each of the following conditions be met before a related case may be reassigned:
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`1. both cases are pending in this Court;
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`2. the handling of both cases by the same judge is likely to result in a substantial
`saving of judicial time and effort;
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`3. the earlier case has not progressed to the point where designating a later filed case
`as related would be likely to delay the proceedings in the earlier case
`substantially; and
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`4. the cases are susceptible of disposition in a single proceeding.
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`L.R. 40.4(b).
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`First, both cases are pending in the Northern District of Illinois, Eastern Division.
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`Second, the handling of both cases before this Court will result in a substantial saving of judicial
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`time and effort. The Parties have conducted substantial discovery in Hospira I, and this Court
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`has already issued its claim construction opinion in that case. (D.I. 69.) Because the patent in
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`Hospira II contains many claim terms that overlap with the patents in Hospira I, reassignment to
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`this Court will avoid duplication of discovery and discovery related issues, and will at least
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`minimize the scope of any potential additional claim construction proceedings. Furthermore, this
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`Court is already familiar with the products and technology at issue. Reassignment will not result
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`4
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 5 of 7 PageID #:2391
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`in substantial delay of the proceedings in Hospira I, because issues related to discovery and
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`claim construction are similar in both cases. The Parties agree that the claim construction Order
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`entered in Hospira I, applies to the identical terms found in the patents of Hospira II. Finally,
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`Hospira I and Hospira II are susceptible to disposition in a single proceeding for all of the
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`reasons described herein. The Parties are coordinating a plan for limited discovery to address any
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`additional issues raised by the Hospira II patents.
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`III. CONCLUSION
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`For the foregoing reasons, the Parties jointly request that this Court enter an Order
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`pursuant to Local Rule 40.4 reassigning the Hospira II case from Judge Durkin to this Court.
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`Dated: December 4, 2017
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`Respectfully submitted,
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`/s/ Sara T. Horton_____
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`Bradford P. Lyerla
`Sara T. Horton
`Yusuf Esat
`Chad J. Ray
`JENNER & BLOCK LLP
`343 N. Clark Street
`Chicago, IL 60654-3456
`(312) 222-9350
`blyerla@jenner.com
`shorton@jenner.com
`yesat@jenner.com
`cray@jenner.com
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`Attorneys for Plaintiff Hospira, Inc.
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`/s/ Joel M. Wallace_____
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`Imron T. Aly
`Joel M. Wallace
`Emily Peña
`Tara Kurtis
`SCHIFF HARDIN LLP
`233 South Wacker Drive, Suite 6600
`Chicago, Illinois 60606
`(312) 258-5500
`ialy@schiffhardin.com
`jwallace@schiffhardin.com
`epena@schiffhardin.com
`tkurtis@schiffhardin.com
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`Ahmed M.T, Riaz (pro hac vice)
`SCHIFF HARDIN LLP
`666 Fifth Avenue, 17th Floor
`New York, NY 10103
`(212) 753-5000
`ariaz@schiffhardin.com
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`5
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 6 of 7 PageID #:2392
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`Attorneys for Defendant/Counterclaimant
`Fresenius Kabi USA, LLC
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`6
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`Case: 1:16-cv-00651 Document #: 72 Filed: 12/04/17 Page 7 of 7 PageID #:2393
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 4, 2017, I electronically filed the foregoing JOINT
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`MOTION AND MEMORANDUM IN SUPPORT OF LOCAL RULE 40.4 MOTION FOR
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`REASSIGNMENT OF RELATED CASE with the Clerk of the United States District Court
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`for the Northern District of Illinois, Eastern Division, using the Court’s CM/ECF system, which
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`shall send notification of such filing to all counsel of record.
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`Date: December 4, 2017
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`Joel M. Wallace
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`/s/
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