Case 1:14-cv-00984-RGA Document 33 Filed 12/10/14 Page 1 of 3 PageID #: 278
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`IMP AX LABO RA TORIES INC., et al.,
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`Plaintiffs,
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`V.
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`Civil Action No. 14-984-RGA
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`LANNETT HOLDINGS INC., et al.,
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`Defendants.
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`IMP AX LABO RA TORIES INC., et al.,
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`Plaintiffs,
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`v.
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`Civil Action No. 14-999-RGA
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`LANNETT HOLDINGS INC., et al.,
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`Defendants.
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`MEMORANDUM ORDER
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`The above-captioned lawsuits have been, at least informally, joined together. To make it
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`more formal, the two cases are CONSOLIDATED FOR ALL PURPOSES pursuant to Fed. R.
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`Civ. P. 42(a). The Defendants are the same in both cases. In one case, the Plaintiffs are Impax
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`Laboratories, Inc., and Astrazeneca AB. In the second, the Plaintiffs are Impax Laboratories,
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`Inc., Astrazeneca AB, and Astrazeneca UK Limited. Both lawsuits involve the same two patents.
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`In the first, Plaintiffs assert that "AstraZeneca AB is the owner by assignment of the '237 patent
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`and has the right to sue for infringement thereof." (No. 14-984, D.I. 1, if 24). A separate
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`paragraph says Impax "holds an exclusive license under the '237 patent." There is the same
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`Page 1 of 3
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`AstraZeneca Exhibit 2011
`Lannett v. AstraZeneca
`IPR2015-01629
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`Case 1:14-cv-00984-RGA Document 33 Filed 12/10/14 Page 2 of 3 PageID #: 279
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`verbiage for the second patent. In the second lawsuit, Plaintiffs assert that "AstraZeneca AB and
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`AstraZeneca UK Limited own all rights, title, and interest in the '237 patent and have the right to
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`sue for infringement thereof." (No. 14-999, D.I. 1, ~ 25). In the next paragraph, it is asserted
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`that Impax "holds an exclusive license under the '237 patent and also has rights to commercialize
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`zolmitriptan in the United States under [an agreement] with AstraZeneca UK Limited." There is
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`the same verbiage for the second patent. The second complaint does not describe the relationship
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`between the two AstraZeneca entities.
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`Plaintiffs might not have been surprised that Defendants filed a motion to dismiss in the
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`first case, claiming, essentially, that Plaintiffs have admitted that they did not include all
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`necessary parties as plaintiffs. Defendants state the first case should be dismissed for lack of
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`standing. Plaintiffs have not very vigorously defended against the motion. Plaintiffs submitted
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`documents showing that AstraZeneca AB was assigned the patents in 2002, and that AstraZeneca
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`UK Limited licensed the patents to Impax. In regard to the allegations of the second complaint,
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`Plaintiffs blithely state that they show that AstraZeneca AB "owns the patents in suit, albeit with
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`some interest resting with" AstraZeneca UK Limited. (D.I. 12, p. 2). What that interest is
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`Plaintiffs chose not to disclose. The matter was briefly discussed at the Rule 16 conference.
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`(D.I. 22 at 4-6). In connection with the motions, I asked for supplemental letters, which have
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`been provided. The letters make clear that the two cases are just the same case, albeit with an
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`extra plaintiff in the second case. It does not throw any further light on why AstraZeneca UK
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`Limited might be licensing patents it does not own.
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`It is not clear to me that there are any consequences to dismissing the first case other than
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`removing some clutter. Nevertheless, there may be consequences, as Defendants have not agreed
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`Case 1:14-cv-00984-RGA Document 33 Filed 12/10/14 Page 3 of 3 PageID #: 280
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`that the first case should be dismissed without prejudice to the second case. 1
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`"' [A ]s a matter of substantive patent law, all co-owners must ordinarily consent to join as
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`plaintiffs in an infringement suit.'" STC. UNM v. Intel Corp., 754 F.3d 940, 941 (Fed. Cir. 2014).
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`Plaintiffs have done just about nothing to meet their burden to show what AstraZeneca UK
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`Limited's ownership interest is in the patents in suit. Maybe AstraZeneca UK Limited should be
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`joined; maybe not. I cannot tell at this point. Plaintiffs have also said that AstraZeneca UK
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`Limited is willing to join the first suit as a plaintiff, but have taken no action to make that
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`happen.
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`The consolidated case has all necessary plaintiffs. Whether the first case did or did not is
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`not something I have to decide now, because I think it is clear (and Defendants have not
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`challenged) that the consolidated case has the necessary plaintiffs so that there is no
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`constitutional standing issue. I have jurisdiction over the consolidated case. There is no need
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`now to sort out which plaintiffs should be in the case. Thus, I will DENY Defendants' motion to
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`dismiss (D.I. 9) without prejudice to its renewal after discovery is complete, should Defendants
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`believe that there then is a point to the motion.
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`IT IS SO ORDERED this (0 day of December 2014.
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`1 Plaintiffs state the second suit is timely filed (in an ANDA sense), but also requested
`Defendants to agree to that, which Defendants refused to do.
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