United States District Court, D. Delaware
FERRING PHARMACEUTICALS INC., FERRING INTERNATIONAL CENTER S A., and FERRING B.V., Plaintiffs,
NOVEL LABORATORIES, INC. and GAVIS PHARMACEUTICALS, LLC, Defendants.
before the Court is Plaintiffs' Motion to Dismiss Count
III Under Federal Rule of Civil Procedure 41(a)(2). (D.I.
91). The Parties have briefed the issue. (D.I. 92, 106, 109).
The parties also submitted, at my request (D.I. 115), letters
addressing potential equitable conditions for dismissal
without prejudice. (D.I. 116, 118). For the reasons set out
below, I will grant Plaintiffs' Motion without prejudice
subject to their payment of Defendants' attorneys'
fees and costs associated with Count III.
5, 2017, Plaintiffs filed this suit against Defendants
alleging infringement of two Orange Book listed patents for
Plaintiffs' drug Prepopik®. (D.I. 1). Plaintiffs also
alleged infringement of U.S. Pat. No. 9, 669, 110
('" 110 Patent"), which is not listed in the
Orange Book. (Id). Defendants filed a motion for
judgment on the pleadings for lack of subject matter
jurisdiction with respect to the '110 patent on August
15, 2017. (D.I. 16). I denied that motion. (D.I. 65). Fact
discovery closed on June 27, 2018. (D.I. 71). On August 29,
2018, 1 granted Plaintiffs' stipulated consent judgment
of noninfringement with respect to the Orange Book Patents.
(D.I. 98). This left only the issue of infringement of
the'110 patent for trial. (D.I. 92 at 3). Plaintiffs
filed the present motion on August 20, 2018 seeking dismissal
without prejudice of Count III, which asserts the' 110
Patent. (D.I. 91). The Parties agree that I should dismiss
Count III. (D.I. 102, 103). The only issue left for me to
decide is whether the dismissal should be with or without
Federal Rule of Civil Procedure 41(a)(2), "an action may
be dismissed at the plaintiffs request only by court order,
on terms that the court considers proper." Although a
court must consider prejudice to the defendant, "the
general rule is that such a motion should be granted
liberally." Baldinger v. Cronin, 535 Fed.Appx.
78, 80 (3d Cir. 2013); see Mobil Oil Corp. v. Advanced
Envtl. Recycling Techs., Inc., 203 F.R.D. 156, 157-58
(D. Del. 2001) ("[W]hile considering the legitimate
interests of both parties, the Court must bear in mind that a
plaintiffs motion should be granted absent substantial
prejudice to the defendant."). Factors a court should
consider when determining whether dismissal will
substantially prejudice a defendant include: 1) the potential
duplicative expense of a second litigation; 2) the expenses
already incurred by the defendant; 3) how far the current
litigation has progressed; and 4) whether the plaintiff was
diligent in seeking dismissal. See Reach & Assocs.,
P.C. v. Dencer, 2004 WL 253487 at *1 (D. Del. Feb. 9,
2004); Connelly Constr. Corp. v. Travelers Cas. &
Sur. Co. of Am., 2018 WL 3549281, at *6 (E.D. Pa. July
may place equitable conditions on a dismissal without
prejudice to ensure a defendant is not unfairly prejudiced.
"A plaintiff ordinarily will not be permitted to dismiss
an action without prejudice under Rule 41(a)(2) after the
defendant has been put to considerable expense in preparing
for trial, except on condition that the plaintiff reimburse
the defendant for at least a portion of his expenses of
litigation." McCants v. Ford Motor Co., 781
F.2d 855, 860 (11th Cir. 1986); see also Connelly,
2018 WL 3549281, at *8 ("Fee-shifting is not only very
common, but also often necessary to protect the nonmoving
party." (citations omitted)). Moreover, "dismissal
without prejudice pursuant to Rule 41(a)(2) may be
conditioned upon the satisfaction of other non-monetary
conditions designed to alleviate the prejudice the defendant
might otherwise suffer." McCants, 781 F.2d at
860; see also In re Wellbutrin XL, 268 F.R.D. 539,
543-44 (E.D. Pa. 2010) ("Courts have imposed a variety
of terms and conditions, including the . .. requirement
that the plaintiff produce documents or agree to allow
discovery to be used in any subsequent action.").
have spent about $225, 000 defending Count III. (D.I. 116 at
3). This figure undoubtedly represents a great many attorney
hours. It also represents the amount of money that will make
Defendants whole in the face of a continued threat of lawsuit
based on the '110 Patent. To address the prejudice
Defendants face from having spent a large sum on Count III in
the present litigation, I will require Plaintiffs to
reimburse Defendants' reasonable costs and attorneys'
fees attributable to that count. With this equitable
condition, the Rule 41(a)(2) dismissal analysis favors
dismissing Count III without prejudice.
Potential Duplicative Expense of a Second Litigation
briefing does not indicate that Defendants will be prejudiced
by significant duplicative expenses in potential future
litigation on the '110 Patent. It is true that fact
discovery, a usually expensive endeavor, closed on June 27.
However, Plaintiffs note, "[T]he discovery completed to
date in this litigation would be directly relevant to any
potential later litigation." (D.I. 92 at 5). Moreover,
expert discovery has not begun and trial preparation is far
in the future. (Id.). Undoubtedly, Defendants would
need to duplicate some efforts in a subsequent suit on
the' 110 Patent but awarding fees to Defendants offsets
any potential prejudice this may impose. Thus, the potential
duplicative expenses of a second litigation do not weigh
against dismissal without prejudice.
Expense Already Incurred by Defendants
briefing focuses primarily on the money and effort that they
have expended in the current litigation. Specifically,
Defendants note that they filed a dispositive motion on the
'110 Patent, engaged in mediation regarding the' 110
Patent, and responded to discovery requests pertaining to the
'110 Patent. (D.I. 106 at 1).
discovery, Plaintiffs respond that only fifteen out of
seventy-two requests for production related to the' 110
Patent. (D.I. 109 at 2). Moreover, Plaintiffs note that only
four out of thirty-two topics posed to Defendants'
corporate witness related to Count III. Plaintiffs conclude,
"[I]t seems reasonable that, in the overall litigation,
Defendants spent significantly more time and resources
responding to the many more requests and topics directed
solely to the now-adjudicated Orange Book patents-efforts
that are irrelevant to Count III." (Id. at 3).
are likely correct that Defendants' expenses on the
Orange Book patent claims were more substantial. But the fact
that Defendants spent more money on something else does not
offset the prejudice to Defendants caused by wasting money on
an unresolved count. However, I believe Plaintiffs'
reimbursement of costs associated with Count III resolves any
prejudice this wasted time and money might cause ...