Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 1 of 3
`Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 1 of 3
`Case 1:14~cv~02759-PAC Document 34 Filed 10/10/14 Page 1 of 4
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`Jakob B. Halpern
`(973) 622-8394
`jhalpern@saiber.com
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`Sé‘iber
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`M’TOBNEYS A1 LMN
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`October 10, 2014
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`Hon. Paul A. Crotty
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`United States District Judge
`United States Courthouse
`500 Pearl Street, Room 735
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`New York, NY 10007
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`flare" ” M MAJ”
`Re: Kowa Company, Ltd. er al. v Aurobz'ndo Pharma Limited et at, and related cases, l4-cv—
`2497—PAC, l4—cv-2647-PAC, 14-cv-2758, l4—cv-2759, l4-cv-2760—PAC, and l4-cv—5575—PAC.
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`Dear Judge Crotty,
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`Our firm, with Rakoczy Molino Mazzochi Siwik LLP, represents the Mylan Defendants
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`in this matter. We submit the within letter brief on behalf of all Defendants in the related
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`matters. This brief addresses the question of whether the Court must apply the Local Patent
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`Rules, which reguire early disclosure of infringement/invalidity contentions, to this matter.1
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`Argument: The Local Patent Rules Require An Early Exchange of Infringement and
`Invalidity Contentions.
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`Effective April 8, 2013, the United States District Courts for the Southern and Eastern
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`Districts of New York adopted Local Patent Rules that “apply to patent infringement, validity
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`and unenforceability actions and proceedings.” L. Pat. R. l. The Local Civil Rules also apply to
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`patent actions and proceedings, “except to the extent they are inconsistent with [the] Local Patent
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`Rules.” Id. Defendants submit that Local Patent Rule 1 confirms that the Local Patent Rules
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`take precedence infer the Local Civil Rules if there is a perceived conflict between the two.
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`1 For the convenience of the Court, Defendants sought to include a placeholder in the case
`schedule submitted today identifying those topics on which the Court had ordered letter briefing.
`Plaintiffs refused to include this. Thus, the non—inclusion of the issue in the proposed schedule
`should not be construed as a waiver by Defendants on the issue.
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`

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`Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 2 of 3
`Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 2 of 3
`Case 1:14—CV—O2759—PAC Document 34 Filed 10l10i14 Page 2 Did
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`Hon. Paul A. Crotty, U.S.D.J.
`October 10, 2014L
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`Local Patent Rules 6 and 7,
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`in contrast
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`to Local Civil Rule 33.3(c), require early
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`disclosure of the parties” contentions regarding patent infringement and invalidity. Specifically,
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`under Local Patent Rule 6, a party claiming patent infringement must serve a set of infringement
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`contentions within 45 days after the initial scheduling conference “which identifies for each
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`opposing party, each claim of each patent—in-suit that is allegedly infringed and each product or
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`process of each Opposing party of which the party claiming infringement is aware that allegedly
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`infringes each identified claim.” L. Pat. R. 6. Under Local Patent Rule 7, the opposing party
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`must serve invalidity contentions within 45 days after service of such infringement contentions
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`that “identify each item of prior art that the party contends allegedly anticipates or renders
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`obvious each asserted claim, and any other grounds of invalidity, including any under 35 U.S.C.
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`§ [01 or § [12= or unenforceability of any of the asserted claims.” L. Pat. R. 7. The parties haVe
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`an ongoing duty to supplement their infringement and invalidity contentions pursuant to Fed. R
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`Civ. P. 26(e). L. Pat. R. 9.
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`This District has applied the schedule contemplated in the Local Patent Rules in other
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`Hatch-Waxman litigation. See, e.g., Purdue Pharma LP. v. Amneal Pharm. LLC, iB—cv-03188-
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`SHS, Order (S.D.N.Y. Sept. 20, 2013). Here: Plaintiffs received Notice Letters from each
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`individual Defendant at least 45 days before filing the respective Complaints. Each individual
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`Defendant’s Notice Letter identified non~infringement positions and included an Offer of
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`Confidential Access that gave the Plaintiffs an opportunity to review each individual Defendant’s
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`ANDA for
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`the purpose of determining whether an infringement action was appropriate.
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`Plaintiffs further had an obligation to satisfy Rule 11 prior to filing an infringement claim. We
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`presume that Plaintiffs believe they had a good faith basis to bring suit; therefore, they cannot
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`now complain that they will not have enough time to determine whether the Defendants”
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`

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`Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 3 of 3
`Case 1:14-cv-05575-PAC Document 36 Filed 10/17/14 Page 3 of 3
`Case 1:14~cv—02759—PAC Document 34 Filed 10110/14 Page 3 of 4
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`Hon. Paul A. Crotty, U.S.D.J.
`October 10, 2014
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`respective ANDA products
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`infringe the patents—in—suit before serving their
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`infringement
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`contentions.
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`Contrary to Plaintiffs’ suggestion during the Rule 16 Conference, there is nothing about a
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`Hatch-Waxman case that warrants a departure from the Local Rules. Rather, the expedited
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`nature of a Hatch—Waxman case strongly favors a prompt and early disclosure of infringement
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`and invalidity contentions so as to allow the parties to streamline discovery and focus on issues
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`that are genuinely disputed.
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`In accordance with these Local Patent Rules, Defendants’ proposed
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`Civil Case Management Plan and Scheduling Order, submitted On October 3, 2014, specified that
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`“Plaintiffs must serve Disolosure of Asserted Claims and Preliminary Infringement Contentions”
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`by December 5, 2014 (60 days after the October 6, 2014 initial scheduling conference), and that
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`“Defendants must serve Preliminary InValidity Contentions” by January 16, 2014 (42 days after
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`service of Plaintiffs’ Preliminary Infringement Contentions).
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`Plaintiffs proposed simply that the parties should “[c]onform to local rules regarding
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`contention interrogatories (LR. 33.3(c)).”
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`Local Civil Rule 33.3(c), however,
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`is clearly
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`inconsistent with the early contention disclosure requirements of Local Patent Rules 6 and 7 and
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`is, therefore, to that extent, inapplicable here. See L. Pat. R. 1.
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`>16
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`*
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`2|:
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`Accordingly, Defendants respectfully request that this Court order the following:
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`The Local Patent Rules will apply to this case. Further, Plaintiffs shall serve their Local
`Patent Rule 6 Disclosure of Asserted Claims and Preliminary Infringement Contentions
`on or before December 5, 2014, and Defendants shall serve their Local Patent Rule 7
`Preliminary Invalidity Contentions on or before January 16, 2015.
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`Respectfully submitted,
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`fs Jakob B. Halpern
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`Jakob B. Halpern
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`3
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