Case 1:21-cv-00549-MN Document 151 Filed 05/07/24 Page 1 of 5 PageID #: 2242
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CMP DEVELOPMENT, LLC,
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`AMNEAL PHARMACEUTICALS LLC,
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`v.
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`C.A. No. 21-549 (MN)
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`Plaintiff,
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`Defendant.
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`MEMORANDUM OPINION
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`Kelly E. Farnan, Tyler E. Cragg, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE;
`Christopher J. Sorenson, Paige Stradley, MERCHANT & GOULD PC, Minneapolis, MN; Andrew O.
`Larson, MERCHANT & GOULD PC, New York, NY; Hayley M. Ostrin, MERCHANT & GOULD PC,
`Alexandria, VA – Attorneys for Plaintiff
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`Anne Shea Gaza, Samantha G. Wilson, YOUNG CONAWAY STARGATT & TAYLOR, LLP,
`Wilmington, DE; Steven A. Maddox, Jeremy J. Edwards, PROCOPIO, CORY, HARGREAVES &
`SAVITCH LLP, Washington, DC, Victor Sai, Dave Deonarine, Lianlian Wu, PROCOPIO, CORY,
`HARGREAVES & SAVITCH LLP, San Diego, CA – Attorneys for Defendant
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`May 7, 2024
`Wilmington, Delaware
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`Case 1:21-cv-00549-MN Document 151 Filed 05/07/24 Page 2 of 5 PageID #: 2243
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`NOREIKA, U.S. DISTRICT JUDGE
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`Presently before the Court is the motion of Defendant Amneal Pharmaceuticals LLC
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`(“Defendant”) to declare this case exceptional under 35 U.S.C. § 285 and for an award of attorneys’
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`fees. (D.I. 41). The motion has been fully briefed. (See D.I. 142, 143, 146, 147 & 149). For the
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`reasons set forth below, Defendant’s motion is DENIED.
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`I.
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`BACKGROUND
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`Plaintiff CMP Development, LLC (“Plaintiff”) brought this Hatch-Waxman action against
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`Defendant after Defendant filed Abbreviated New Drug Application No. 215572 with the U.S.
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`Food and Drug Administration seeking approval to market a generic version of Plaintiff’s
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`CaroSpir® product before the expiration of United States Patent Nos. 10,624,906, 10,660,907 and
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`10,888,570 (collectively, “the Asserted Patents”).1 After a two-day bench trial (see D.I. 110 & 111
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`(“Tr.”)) and careful review of the post-trial submissions, the Court concluded that Plaintiff had
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`failed to show that Defendant’s ANDA product would infringe the asserted claims of the Asserted
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`Patents.2 Plaintiff appealed that decision but later stipulated to dismissal of its appeal. Defendant
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`then filed the instant motion.
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`II.
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`LEGAL STANDARD
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`Section 285 of the Patent Act provides that a “court in exceptional cases may award
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`reasonable attorney fees to the prevailing party.”3 35 U.S.C. § 285. An exceptional case within
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`the meaning of the statute is “one that stands out from others with respect to the substantive
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`The Complaint also asserted patent infringement of United States Patent Nos. 9,757,394
`and 10,493,083, but those claims were dismissed prior to trial along with Defendant’s
`counterclaims for invalidity of all of the patents asserted in the Complaint. (D.I. 98).
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`The asserted claims addressed by the Court were claims 1 and 8 of the ’906 patent, claims 1
`and 10 of the ’907 patent and claims 1 and 7-10 of the ’570 patent.
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`There is no dispute in this case that Defendant is the prevailing party.
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`1
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`1
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`Case 1:21-cv-00549-MN Document 151 Filed 05/07/24 Page 3 of 5 PageID #: 2244
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`strength of a party’s litigating position (considering both the governing law and the facts of the
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`case) or the unreasonable manner in which the case was litigated.” Octane Fitness, LLC v. ICON
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`Health & Fitness, Inc., 572 U.S. 545, 554 (2014). Whether a case is exceptional is a question
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`committed to the Court’s discretion, and the Court must consider the totality of the circumstances
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`in reaching its conclusion. Id. In assessing the totality of the circumstances, the Court may
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`consider, inter alia, “frivolousness, motivation, objective unreasonableness (both in the factual
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`and legal components of the case) and the need in particular circumstances to advance
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`considerations of compensation and deterrence.” Id. at 554 n.6. A party seeking attorneys’ fees
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`must show the case is exceptional by a preponderance of the evidence. Id. at 557-58. The Court
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`may award attorneys’ fees in “the rare case in which a party’s unreasonable conduct – while not
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`necessarily independently sanctionable – is nonetheless so ‘exceptional’ as to justify an award of
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`fees.” Id. at 555.
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`III. DISCUSSION
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`Defendant’s primary argument is that the present case is exceptional within the meaning
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`of § 285 and attorneys’ fees should be awarded because the case “was objectively unreasonable,
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`if not baseless.” (D.I. 142 at 12). Specifically, Defendant asserts that (1) Plaintiff “failed entirely
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`to present any evidence that the accused amount of tragacanth powder was equivalent to the
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`claimed amount of xanthan gum” and (2) Plaintiff “failed even to present a prima facie case that
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`tragacanth powder and xanthan gum increase viscosity in substantially the same way.” (D.I. 142
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`at 12-13). In support of its positions, Defendant cites to this Court’s opinion rejecting Plaintiff’s
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`arguments supporting infringement and finding that Plaintiff had failed to meet its burden of
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`proving infringement. (Id.).
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`The Court’s decision was not, however, a foregone conclusion at the end of trial. Nor was
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`it an easy decision. The issue before the Court was infringement under the doctrine of equivalents,
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`2
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`Case 1:21-cv-00549-MN Document 151 Filed 05/07/24 Page 4 of 5 PageID #: 2245
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`a fact-intensive inquiry. The Court spent substantial time carefully weighing the evidence
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`presented and reflecting on credibility determinations made at trial as well as the relevant burden
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`of proof. Most of the Court’s post-trial opinion addressed the issue of infringement. (D.I. 123).
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`Nowhere in that opinion did the Court treat Plaintiff’s arguments as unreasonable or frivolous. See
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`Noven Pharms. v. Amneal Pharms. LLC, No. 18-699-LPS, 2021 WL 4033172, at *4 (D. Del. Sept.
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`3, 2021) (finding no exceptionality where Court “did not treat [] arguments as unreasonable or
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`frivolous and did not find resolving the parties’ disputes to be an easy task”). Indeed, although
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`Plaintiff ultimately did not prevail on infringement, its position was not objectively unreasonable
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`or baseless. Instead, Plaintiff presented a triable issue on which it happened to lose. That does not
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`render the case “exceptional.” Tyco Healthcare Grp. LP. v. Mut. Pharm. Co., No. 07-1299
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`(SRC)(CLW), 2016 WL 3965201, at *3 (D.N.J. July 22, 2016) (“[W]here a party has set forth
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`some good faith argument in favor of its position, it will generally not be found to have advanced
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`‘exceptionally meritless’ claims.”); see also Munchkin, Inc. v. Luv N’ Care, Ltd., 960 F.3d 1373,
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`1378 (Fed. Cir. 2020) (“The legislative purposed behind [35 U.S.C.] § 285 is to prevent a party
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`from suffering a ‘gross injustice,’ not to punish a party for losing.” (alteration in original) (internal
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`quotations omitted)).
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`Plaintiff’s decisions to drop two of the originally asserted patents from the case and to drop
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`its appeal of the judgment entered do not change the outcome. It is hardly uncommon that, during
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`the course of litigation, parties make concessions or drop claims in order to focus their cases or
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`preserve their resources. Indeed, Defendant also made concessions, dropping its invalidity
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`counterclaims approximately two months before trial. The Court generally views such efforts as
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`positive developments and will not penalize (either side) for streamlining the issues in an
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`appropriate manner.
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`3
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`Case 1:21-cv-00549-MN Document 151 Filed 05/07/24 Page 5 of 5 PageID #: 2246
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`IV. CONCLUSION
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`For the foregoing reasons, Defendant’s motion to declare this case exceptional and for an
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`award of fees is denied. An order will follow.
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