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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:15-cv-1455-WCB
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`§§§§§§§§§
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`ALLERGAN, INC.,
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`Plaintiff,
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`v.
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`TEVA PHARMACEUTICALS USA, et al.,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is Mylan Pharmaceuticals Inc., and Mylan Inc.’s Motion to Limit the
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`Number of Asserted Patent Claims, Dkt. No. 238. In reliance on the representations made by
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`plaintiff Allergan, Inc., as to the reductions it will make in the number of its asserted claims, the
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`Court DENIES the motion.
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`BACKGROUND
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`Allergan initially asserted a total of 157 claims in six patents in this case. After the Court
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`urged Allergan to reduce the number of asserted claims, Allergan lowered the number by about
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`20 percent to 126 claims. Mylan then filed the present motion seeking to require Allergan to
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`further reduce the number of its asserted claims in accordance with this district’s Order Focusing
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`Patent Claims and Prior Art to Reduce Costs, General Order No. 13-20. Mylan urged the Court
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`to order Allergan to drop all but 16 of its claims by the close of fact discovery. Allergan argued
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`that forcing it to reduce the number of its asserted claims on that schedule and to that degree
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`would be highly prejudicial to it. In its surreply brief, however, Allergan has represented that it
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`will reduce the number of asserted claims to 25 within one week of receiving the defendants’
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`1
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`SRMT 2117
`MYLAN PHARMACEUTICALS V.
`ALLERGAN IPR2016-01132
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`Case 2:15-cv-01455-WCB Document 265 Filed 01/26/17 Page 2 of 5 PageID #: 9876
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`final non-infringement and invalidity contentions, and that it will reduce the number of asserted
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`claims to no more than 15 within two weeks of the close of expert discovery. Allergan’s offer
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`has substantially narrowed the scope of the parties’ dispute, converting it into an issue focused
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`on the timing of the reduction in claims rather than on the total number of asserted claims.
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`DISCUSSION
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`This district’s Order Focusing Patent Claims and Prior Art addresses the problem that
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`arises when patentees assert a large number of claims or accused infringers assert a large number
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`of prior art references in patent litigation. The Order requires the parties to reduce the asserted
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`claims to a manageable number and likewise to reduce the prior art references to a reasonable
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`number. With respect to the number of claims, the core requirement of the Order is that “[n]o
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`later than 28 days before the service of expert reports by the party with the burden of proof on an
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`issue, the patent claimant shall serve a Final Election of Asserted Claims, which shall identify no
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`more than five asserted claims per patent . . . and no more than a total of 16 claims.”
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`Courts in this district, in appropriate circumstances, have required patentees to reduce the
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`number of asserted claims, both before and after the issuance of the Order Focusing Patent
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`Claims. See VirnetX Inc. v. Apple, Inc., No. 6:12-cv-855, Dkt. No. 283, at 1 (E.D. Tex. Oct. 29,
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`2015); Commonwealth Sci. & Indus. Research Org. v. Mediatek Inc., No. 6:12-cv-578, Dkt. No.
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`672, at 2 (E.D. Tex. June 5, 2015); Konami Digital Ent. Co., Ltd. v. Harmonix Music Sys., Inc.,
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`No. 6:08-cv-286, Dkt. No. 247, at 2, 5 (E.D. Tex. Feb. 3, 2010); Widevine v. Verimatrix, 2:07-
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`cv-321, at 2 (E.D. Tex. Dec. 28, 2009) (Rader, J., sitting by designation); Negotiated Data
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`Solutions, LLC v. Dell, Inc., No. 2:06-cv-528, Dkt. No. 105, at 1 (E.D. Tex. July 31, 2008);
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`Hearing Components, Inc. v. Shure, Inc., No. 9:07-cv-104, 2008 WL 2485426, at *1 (E.D. Tex.
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`June 13, 2008); Kawasaki Heavy Indus., Ltd. v. Bombardier Recreation Prods., Inc., No. 5:06-
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`2
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`Case 2:15-cv-01455-WCB Document 265 Filed 01/26/17 Page 3 of 5 PageID #: 9877
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`cv-222, at 1 (E.D. Tex. Jan. 22, 2007); Data Treasury Corp v. Wells Fargo & Co., No. 2:06-cv-
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`72, at 3-5 (E.D. Tex. Oct. 25, 2006).
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`A court must exercise the authority to order a reduction in the number of asserted claims
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`with care not to prejudice the patentee, particularly in light of the fact that each of the claims of a
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`patent embodies a property right. The Federal Circuit, while approving a district court order
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`limiting the number of claims to be tried, has emphasized that claim reduction should not be
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`ordered “too early in the discovery process” because doing so would deny the patentee “the
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`opportunity to determine whether particular claims might raise separate issues of infringement or
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`invalidity in light of the defendants’ accused products and proposed defenses.” In re Katz, 639
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`F.3d 1303, 1309 (Fed. Cir. 2011).
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`The Court is satisfied that Allergan’s proposed reductions in the number of its asserted
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`claims is reasonable and satisfies the objectives of this district’s Order Focusing Patent Claims
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`and Prior Art while avoiding prejudice to Allergan. The defendants’ final non-infringement
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`contentions were served on Allergan on January 12, 2017, and the defendants’ final invalidity
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`contentions are to be served on Allergan by February 1, 2017. Opening expert reports are due on
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`March 2, 2017, and expert discovery is scheduled to close on May 9, 2017. As noted, Allergan
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`proposes that within one week of receiving the defendants’ final invalidity contentions, it will
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`reduce to no more than 25 the number of its asserted claims, and within two weeks of the close
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`of expert discovery it will reduce to no more than 15 the number of its asserted claims. That
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`schedule will give the defendants 22 days between the service of their final invalidity contentions
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`and the service of opening expert reports. The defendants can increase that period if they serve
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`their final invalidity contentions prior to the February 1, 2017, deadline. Twenty-five claims is
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`not an unmanageable number for an expert to address in an opening report, and 22 days (or more
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`Case 2:15-cv-01455-WCB Document 265 Filed 01/26/17 Page 4 of 5 PageID #: 9878
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`if the defendants serve their invalidity contentions early) is not an unreasonably short period of
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`time in which to do so.
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`The further reduction of the number of asserted claims to no more than 15 within two
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`weeks of the close of expert discovery is also reasonable. The Court views 15 as a reasonable
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`number of claims for trial, and postponing the reduction in the number of asserted claims from
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`25 to 15 until after the close of expert discovery allows Allergan to select its claims for trial with
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`a relatively settled record as to the defendants’ positions on non-infringement and invalidity, so
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`as to minimize the risk that Allergan will drop claims that end up being important to its
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`infringement case at trial. Finally, in light of Allergan’s agreement to limit itself to 15 claims,
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`and given that the patents are quite similar, the Court sees no reason to impose an additional
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`restriction on the number of claims to be asserted from each patent.
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`In its opposition, Dkt. No. 246, at 8, and in its sur-reply brief, Dkt. No. 261, at 4,
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`Allergan urges that the Court similarly require Mylan to reduce the number of prior art
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`references on which it is relying for its invalidity defenses. The Court notes that the Order
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`Focusing Patent Claims and Prior Art to Reduce Costs applies by its terms not only to the
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`number of patent claims asserted by patentees, but also to the number of prior art references
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`asserted by accused infringers. See Order at 2 (“No later than 28 days before the service of
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`expert reports by the party with the burden of proof on an issue, the patent defendant shall serve
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`a Final Election of Asserted Prior Art, which shall identify no more than six asserted prior art
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`references per patent from among the twelve prior art references previously identified for that
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`particular patent and no more than a total of 20 references.”).
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`The issue of the reduction in the number of prior art references has not been fully briefed,
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`and the Court is not in a position at this time to enter an order directing with specificity how
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`Case 2:15-cv-01455-WCB Document 265 Filed 01/26/17 Page 5 of 5 PageID #: 9879
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`many prior art references the defendants should be allowed to assert. Nonetheless, the venerable
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`legal principle that “what is sauce for the goose is sauce for the gander” applies here. See
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`Heffernan v. City of Paterson, N.J., 136 S. Ct. 1412, 1418 (2016). The parties (including not just
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`Mylan, but the other defendants as well) are directed to meet and confer in an effort to reach
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`agreement as to the number of prior art references the defendants will be allowed to assert. If the
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`parties cannot reach agreement and Court intervention is needed, the Court will address the
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`question after full briefing of the issue.
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`IT IS SO ORDERED.
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`SIGNED this 26th day of January, 2017.
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`_____________________________
`WILLIAM C. BRYSON
`UNITED STATES CIRCUIT JUDGE
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