`
`Stephen M. Hash
`BAKER BOTTS LLP
`98 San Jacinto Blvd, Suite 1500
`Austin, TX 78701
`(512) 322-3687
`
`Of Counsel for Plaintiff Pozen Inc.
`
`
`
`
`John E. Flaherty
`Jonathan M.H. Short
`McCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`(973) 622-4444
`
`Attorneys for Plaintiffs Horizon Pharma, Inc.,
`and Pozen Inc.
`
`Ricardo Rodriguez
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Tel: (650) 843-5000
`
`Of Counsel for Plaintiff Horizon Pharma, Inc.
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`Plaintiffs/Counterclaim Defendants,
`
`v.
`
`
`
`HORIZON PHARMA, INC., and POZEN
`INC.,
`
`
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`MYLAN LABORATORIES LIMITED, and
`MYLAN INC.,
`
`
`
`Defendants/Counterclaim Plaintiffs.
`
`Civil Action No. 3:15-cv-03327-MLC-DEA
`
`PLAINTIFFS’ ANSWER TO
`DEFENDANTS’ COUNTERCLAIMS
`TO SECOND AMENDED COMPLAINT
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiffs/Counterclaim-Defendants Horizon Pharma, Inc., and Pozen Inc. (collectively,
`
`“Plaintiffs”), by their attorneys, hereby answer the counterclaims asserted on February 19, 2016 by
`
`Defendants/Counterclaim-Plaintiffs Mylan Pharmaecuticals Inc., Mylan Laboratories Limited, and
`
`Mylan, Inc. (collectively, “Mylan” or “Defendants”) as set forth below. To the extent not
`
`specifically admitted herin, the allegations of the Counterclaims are denied.
`
`
`
`
`
`Page 1 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 2 of 12 PageID: 556
`
`
`ANSWER TO DEFENDANTS’ COUNTER CLAIMS
`
`PARTIES
`
`On information and belief, Plaintiffs admit the allegations of Paragraph 1.
`
`On information and belief, Plaintiffs admit the allegations of Paragraph 2.
`
`Plaintiffs admit the allegations contained in Paragraph 3.
`
`Plaintiffs admit the allegations contained in Paragraph 4.
`
`Plaintiffs admit the allegations contained in Paragraph 5.
`
`JURISDICTION AND VENUE
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The allegations contained in Paragraph 6 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs admit that venue is proper in
`
`this District for this action only, that they are subject to personal jurisdiction in this district for this
`
`action only, and that they commenced and continue to prosecute this action.
`
`FIRST COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 8,852,636)
`
`7.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 6 of this
`
`Answer as though fully set forth herein.
`
`8.
`
`9.
`
`Plaintiffs deny the allegations contained in Paragraph 8.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘636 patent. Plaintiffs deny the remaining allegations in Paragraph 9.
`
`10.
`
`The allegations contained in Paragraph 10 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 10.
`
`11.
`
`The allegations contained in Paragraph 11 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`
`
`2
`
`Page 2 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 3 of 12 PageID: 557
`
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 11.
`
`12.
`
`The allegations contained in Paragraph 12 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 12.
`
`SECOND COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 8,858,996)
`
`13.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 12 of this
`
`Answer as though fully set forth herein.
`
`14.
`
`15.
`
`Plaintiffs deny the allegations contained in Paragraph 14.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘996 patent. Plaintiffs deny the remaining allegations in Paragraph 15.
`
`16.
`
`The allegations contained in Paragraph 16 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 16.
`
`17.
`
`The allegations contained in Paragraph 17 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 17.
`
`18.
`
`The allegations contained in Paragraph 18 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 18.
`
`THIRD COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 8,865,190)
`
`
`
`
`
`3
`
`Page 3 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 4 of 12 PageID: 558
`
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 18 of this
`
`19.
`
`Answer as though fully set forth herein.
`
`20.
`
`21.
`
`Plaintiffs deny the allegations contained in Paragraph 20.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘190 patent. Plaintiffs deny the remaining allegations in Paragraph 21.
`
`22.
`
`The allegations contained in Paragraph 22 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 22.
`
`23.
`
`The allegations contained in Paragraph 23 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 23.
`
`24.
`
`The allegations contained in Paragraph 24 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 24.
`
`FOURTH COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 9,161,920)
`
`25.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 24 of this
`
`Answer as though fully set forth herein.
`
`26.
`
`27.
`
`Plaintiffs deny the allegations contained in Paragraph 26.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘920 patent. Plaintiffs deny the remaining allegations in Paragraph 27.
`
`28.
`
`The allegations contained in Paragraph 28 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 28.
`
`
`
`4
`
`Page 4 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 5 of 12 PageID: 559
`
`
`The allegations contained in Paragraph 29 are legal conclusions as to which no
`
`29.
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 29.
`
`30.
`
`The allegations contained in Paragraph 30 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 30.
`
`FIFTH COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 9,198,888)
`
`31.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 30 of this
`
`Answer as though fully set forth herein.
`
`32.
`
`33.
`
`Plaintiffs deny the allegations contained in Paragraph 32.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘888 patent. Plaintiffs deny the remaining allegations in Paragraph 33.
`
`34.
`
`The allegations contained in Paragraph 34 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 34.
`
`35.
`
`The allegations contained in Paragraph 35 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 35.
`
`36.
`
`The allegations contained in Paragraph 36 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 36.
`
`SIXTH COUNTERCLAIM
`(Declaratory Judgment of Noninfringement of U.S. Patent No. 9,220,698)
`
`
`
`5
`
`Page 5 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 6 of 12 PageID: 560
`
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 36 of this
`
`37.
`
`Answer as though fully set forth herein.
`
`38.
`
`39.
`
`Plaintiffs admit the allegations contained in Paragraph 38.
`
`Plaintiffs admit the allegations contained in Paragraph 39.
`
`40.
`
`Plaintiffs deny the allegations in Paragraph 40.
`
`41.
`
`Plaintiffs deny the allegations in Paragraph 41.
`
`42.
`
`The allegations contained in Paragraph 42 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 42.
`
`43.
`
`The allegations contained in Paragraph 43 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 43.
`
`44.
`
`The allegations contained in Paragraph 44 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 44.
`
`SEVENTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,852,636)
`
`45.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 44 of this
`
`Answer as though fully set forth herein.
`
`46.
`
`47.
`
`Plaintiffs deny the allegations contained in Paragraph 46.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘636 patent. Plaintiffs deny the remaining allegations in Paragraph 47.
`
`
`
`6
`
`Page 6 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 7 of 12 PageID: 561
`
`
`The allegations contained in Paragraph 48 are legal conclusions as to which no
`
`48.
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 48.
`
`49.
`
`The allegations contained in Paragraph 49 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 49.
`
`50.
`
`The allegations contained in Paragraph 50 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 50.
`
`EIGHTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,858,996)
`
`51.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 50 of this
`
`Answer as though fully set forth herein.
`
`52.
`
`53.
`
`Plaintiffs deny the allegations contained in Paragraph 52.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘996 patent. Plaintiffs deny the remaining allegations in Paragraph 53.
`
`54.
`
`The allegations contained in Paragraph 54 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 54.
`
`55.
`
`The allegations contained in Paragraph 55 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 55.
`
`
`
`7
`
`Page 7 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 8 of 12 PageID: 562
`
`
`The allegations contained in Paragraph 56 are legal conclusions as to which no
`
`56.
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 56.
`
`NINTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,865,190)
`
`57.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 56 of this
`
`Answer as though fully set forth herein.
`
`58.
`
`59.
`
`Plaintiffs deny the allegations contained in Paragraph 58.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘190 patent. Plaintiffs deny the remaining allegations in Paragraph 59.
`
`60.
`
`The allegations contained in Paragraph 60 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 60.
`
`61.
`
`The allegations contained in Paragraph 61 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 61.
`
`62.
`
`The allegations contained in Paragraph 62 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 62.
`
`TENTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,161,920)
`
`63.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 62 of this
`
`Answer as though fully set forth herein.
`
`64.
`
`Plaintiffs deny the allegations contained in Paragraph 64.
`
`
`
`8
`
`Page 8 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 9 of 12 PageID: 563
`
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`65.
`
`infringe the claims of the ‘920 patent. Plaintiffs deny the remaining allegations in Paragraph 65.
`
`66.
`
`The allegations contained in Paragraph 66 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 66.
`
`67.
`
`The allegations contained in Paragraph 67 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 67.
`
`68.
`
`The allegations contained in Paragraph 68 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 68.
`
`ELEVENTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,198,888)
`
`69.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 68 of this
`
`Answer as though fully set forth herein.
`
`70.
`
`71.
`
`Plaintiffs deny the allegations contained in Paragraph 70.
`
`Horizon and Pozen allege that Mylan’s proposed naproxen/esomeprazole products
`
`infringe the claims of the ‘888 patent. Plaintiffs deny the remaining allegations in Paragraph 71.
`
`72.
`
`The allegations contained in Paragraph 72 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 72.
`
`73.
`
`The allegations contained in Paragraph 73 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`
`
`9
`
`Page 9 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 10 of 12 PageID: 564
`
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 73.
`
`74.
`
`The allegations contained in Paragraph 74 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 74.
`
`TWELFTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,220,698)
`
`75.
`
`Plaintiffs repeat and incorporate herein by reference Paragraphs 1 through 74 of this
`
`Answer as though fully set forth herein.
`
`76.
`
`Plaintiffs deny the allegations contained in Paragraph 76.
`
`77.
`
`Plaintiffs deny the allegations in Paragraph 77.
`
`78.
`
`The allegations contained in Paragraph 78 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 78.
`
`79.
`
`The allegations contained in Paragraph 79 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs do not contest that there is a
`
`case or controversy between Plaintiffs and Mylan as to Mylan’s infringement of the patents-in- suit
`
`and deny the remaining allegation in Paragraph 79.
`
`80.
`
`The allegations contained in Paragraph 80 are legal conclusions as to which no
`
`response is required. To the extent a response is required, Plaintiffs deny the allegations in
`
`Paragraph 80.
`
`PRAYER FOR RELIEF
`
`The “Prayer for Relief” section sets forth legal conclusions and prayers for relief as to which
`
`no response is required. To the extent this section may be deemed to allege any facts or factual or
`
`legal entitlements to the requested relied, Plaintiffs deny each and every allegation. Further,
`
`
`
`10
`
`Page 10 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 11 of 12 PageID: 565
`
`
`Plaintiffs deny that Defendants are entitled to any of the requested relief, either as prayed or
`
`otherwise.
`
`Dated: March 7, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: s/ John E. Flaherty
`John E. Flaherty
`Jonathan M.H. Short
`MCCARTER &ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
`(973) 622-4444
`
`Attorneys for Plaintiffs Horizon Pharma,
`Inc., and Pozen Inc.
`
`Ricardo Rodriguez
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Tel: (650) 843-5000
`
`Of Counsel for Plaintiff Horizon Pharma, Inc.
`
`Stephen M. Hash
`BAKER BOTTS LLP
`98 San Jacinto Boulevard, Suite 1500
`Austin, Texas 78701-4078
`Tel: (512) 322-2500
`
`Of Counsel for Plaintiff Pozen Inc.
`
`
`
`
`
`11
`
`Page 11 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`
`
`Case 3:15-cv-03327-MLC-DEA Document 34 Filed 03/07/16 Page 12 of 12 PageID: 566
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that true copies of the foregoing ANSWER TO
`
`COUNTERCLAIMS OF DEFENDANTS was caused to be served on March 7, 2016, by electronic
`
`mail and/or the ECF system upon all counsel of record.
`
`By: s/ John E. Flaherty
`John E. Flaherty
`
`
`
`
`
`
`
`12
`
`Page 12 of 12
`
`Patent Owner Ex. 2006
`Mylan v. Pozen
`IPR2017-01995
`
`