Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

GlaxoSmithKline LLC v. Glenmark Pharmaceuticals Inc., USA

United States District Court, D. Delaware

March 5, 2017

GLAXOSMITHKLINE LLC and SMITHKLINE BEECHAM CORK LIMITED, Plaintiffs,
v.
GLENMARK PHARMACEUTICALS INC., USA, Defendant. GLAXOSMITHKLINE LLC and SMITHKLINE BEECHAM (CORK LIMITED), Plaintiffs,
v.
TEVA PHARMACEUTICALS USA, INC., Defendant.

          MEMORANDUM ORDER

          CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE.

         At Wilmington this 6th day of February, 2017.

         The Court has considered the parties' letter submissions, (Civil Action No. 14-877-LPS-CJB ("Glenmark Action"), D.I. 191, 196, 199; Civil Action No. 14-878-LPS-CJB ("Teva Action"), D.I. 229, 234, 237), relating to Plaintiffs GlaxoSmithKline LLC ("GSK") and SmithKline Beecham (Cork) Limited's (collectively, "Plaintiffs") pending letter motion to strike references to angiotensin receptor blockers ("ARBs") from Defendants Glenmark Pharmaceuticals Inc., USA's ("Glenmark") and Teva Pharmaceuticals USA, Inc.'s ("Teva")(collectively, "Defendants") Expert Rebuttal Reports, (Glenmark Action, D.I. 201; Teva Action, D.I. 238), as well as the parties' arguments made during the January 27, 2017 teleconference with the Court.[1] Plaintiffs request that the Court strike a "narrow set of paragraphs" in certain of Defendants' experts' rebuttal reports that reference the use of carvedilol with ARBs. (D.I. 191 at l)[2] Plaintiffs allege that these paragraphs assert a new, sixteenth theory of a non-infringing alternative to Plaintiffs' patented method of using carvedilol and ACE inhibitors to treat congestive heart failure: the use of carvedilol with ARBs to treat congestive heart failure. (Id.) And Plaintiffs assert that this theory should be stricken because it was never disclosed during fact discovery and causes surprise and prejudice to them. (Id.)[3]

         For their part, Defendants explain that their experts will not be "expressly identify[ing] the use of ARBs as a non-infringing alternative to [COREG®] (the brand name of GSK's carvedilol tablets)." (D.I. 196 at 2; see also Teva Action, D.I. 234 at l)[4] They also assert that the references to ARBs in their experts' rebuttal reports fall into two categories that are permissible under the circumstances here: (1) background information that covers current treatment options for heart failure but that offers no affirmative opinions regarding non-infringing alternatives; and (2) opinions properly offered in response to the opinion disclosed in GSK's expert's opening report that "carvedilol is not prescribed with other therapies beyond the three drugs listed in the claims (diuretics, digoxin, and ACE inhibitors)." (Teva Action, D.I. 234 at 1-2; see also Glenmark Action, D.I. 196 at 1-3 (citing id, ex. 1 at ¶ 109 (GSK's expert Dr. McCullough opining that carvedilol '"is primarily administered as part of a combination of medications that typically include at least an ACE inhibitor and/or diuretics'")))

         Federal Rule of Civil Procedure 37(c)(1) provides that "[i]f a party fails to provide information... as required by Rule 26[](e), the party is not allowed to use that information.. .to supply evidence on a motion, at a hearing, or at trial, unless the failure was substantially justified or is harmless." In considering whether to exclude evidence relating to an untimely or otherwise improper disclosure, the United States Court of Appeals for the Third Circuit has directed district courts to weigh certain factors, known as "the Pennypack factors": (1) the surprise or prejudice to the moving party; (2) the ability of the moving party to cure any such prejudice; (3) the extent to which allowing the testimony would disrupt the order and efficiency of trial; (4) bad faith or willfulness in failing to comply; and (5) the importance of the testimony sought to be excluded.

         See Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904-05 (3d Cir. 1977), overruled on other grounds, Goodman v. Lukens Steel Co., Ill. F.2d 113 (3d Cir. 1985); see also Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997).

         Plaintiffs point to Defendants' responses to the following interrogatories in claiming that Defendants failed to timely disclose ARBs as a non-infringing alternative:

Interrogatory No. 19: Identify any product or method that you contend was an available, acceptable non-infringing alternative to Coreg®
Interrogatory No. 8: For each claim of the '000 patent, describe in detail all facts and identify all evidence in support of Defendant's contention, if any, that Defendant does not infringe the claim.

(D.I. 191, ex. D at 6, 25)

         With respect to Interrogatory 19, the Court agrees with Teva that the interrogatory is ambiguous, in the sense that it does not request Defendants to identify any method they contend is an acceptable non-infringing alternative to the methods claimed in the '000 patent. (Teva Action, D.I. 234 at 2 n.l) Accordingly, the Court further agrees that Teva's interpretation of the interrogatory--that it sought identification only of drugs that could be used in lieu of COREG itself (i.e., as an alternative to COREG), and that ARBs are not such drugs-is reasonable. (Id.)

         As for Interrogatory No. 8, it was certainly not solely and explicitly focused on seeking a list of the entire universe of possible non-infringing alternatives to the claimed method. Instead, it more broadly asked for Defendants' contentions that Defendants do not infringe the claimed method. Defendants' responses thus disclosed facts responsive to that (broader) issue (e.g., asserting why, in Defendants' view, they did not induce infringement of the claims). (D.I. 191, ex. D at 6-14; id, ex. E at 11-14) Of course, one of the many ways that Defendants would not be guilty of inducing infringement is if they encouraged others to commit an act, but that act did not amount to an act of direct infringement of the claims. And on that score, Defendants' respective responses to Interrogatory No. 8 did note that carvedilol has multiple "non-infringing uses" ("including [, ]" for example, using carvedilol for the FDA-approved indications of treatment of hypertension and treatment of left ventricular dysfunction following myocardial infarction). (Id., ex. D at 8; id., ex. E at 13) With this in mind, to the extent that the expert report paragraphs at issue (regarding the use of carvedilol with ARBs to treat heart failure) could be said to amount to Defendants articulating a scenario under which they could not infringe the patent-in-suit (e.g., a scenario in which they would not be inducing direct infringement of the patent), then the content of those paragraphs would seem to implicate Interrogatory No. 8. And a number of the paragraphs at issue do seem to fit this bill.[5]

         The Court, then, assumes that at least some of the paragraphs at issue implicate content that should have been earlier disclosed as a response to Interrogatory No. 8. But even doing so, it concludes that the Pennypack factors would not counsel in favor of granting the motion.

         The Court finds that the first Pennypack factor, which considers surprise or prejudice, leans in Plaintiffs' favor. References to ARBs may have caused Plaintiffs some amount of surprise, since ARBs were not a part of Defendants' disclosures during fact discovery. (Any surprise should not be too significant, however, since it is not disputed that Plaintiffs' infringement expert is familiar with the use of carvedilol and ARBs to treat congestive heart failure, and has cited to material that takes note of such treatment.). The late disclosure has ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.