Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00884-SLR J Document 90 Filed 04/12/2007 Page 1 of 2
Younc CoNAwAY STARGATT & TAYLOR, LLP
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April 12, 2007
BY E-FILING
The Honorable Sue L. Robinson
United States District Court
844 King Street
Wilmington, DE 19801
Re: Ferring B. V v. T eva Pharmczceuticals USA, Inc., et al.
Civil Action No. 04-884-SLR
Dear Chief Judge Robinson:
We write on behalf of Teva in response to Fe1ring’s letter to the Court of April 9,
2007. The oral argument transcript in the F erring v. Barr case, attached to Ferring’s April 9,
2007 letter to the Court, confirms that the ruling in that case is inapposite to the attorney’s fees
motion in this case. As noted in our March 16, 2007 letter, there are critical differences in the
argument for atto1ney’s fees in the Barr case and the present case. The attorney’s fees argument
in Barr was based primarily on inequitable conduct. Judge Brieant found "as a matter of law that
inequitable conduct alone doesn’t compel a finding that a case is exceptional? (Transciipt, p.
36, ll. 19 — 21.)
Teva’s motion here is not based on "inequitab1e conduct alone." Teva’s motion
was based on Ferring’s manifest unreasonability in filing suit and forcing Teva to defend the
present suit after Fening had already been confronted with the facts showing its inequitable
conduct through the summary judgment motion in the Barr case.
Teva’s case for fees — based on Fe1ring’s wrongful attempt to enforce the ‘398
patent knowing of its unenforceability — is much stronger than Barr’s case for fees based on
Ferring’s wrongful procurement of the ‘398 patent. Indeed, Teva’s attorney’s fees motion is
supported by the policies underlying Section 285 of the Patent Code. This very point was made
by James Monroe, counsel for Ferring in the hearing before Judge Brieant:
If we look at the policy behind 285, it is enacted to essentially
sanction conduct with respect to the enforcement of a patent, not
with respect to the procurement of a patent, and that is the policy
that is at issue.
(Transcript, p. 24, ll. 15-18.)
DB0l:23670l6.1 0589561012

Case 1 :04-cv-00884-SLR Document 90 Filed 04/12/2007 Page 2 of 2
YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Sue L. Robinson
April l2, 2007
Page 2
Teva agrees with Fe1ring’s argument to Judge Brieant. Section 285 was designed
to deter enforcement actions brought on patents that the patentee has reason to know are
unenforceable. It was designed to give patentees some pause before bringing an otherwise risk—
free action on patents they know to be weak. Here, Ferring learned of the unenforceability of its
patent through the Barr action, but nevertheless subjected Teva to litigation on this
unenforceable patent. Ferring should be held accountable for that action by paying Teva’s
attorney’s fees.
Respectfully submitted,
r— `
Josy W. Ingersoll (No. 1088)
JWI:cg
cc: Clerk of the Court (by e—filing and hand delivery)
Francis DiGiovanni, Esquire (by e—iiling and e-mail)
Dennis J. Mondolino, Esquire (by e-mail)
Christine A. Pepe, Esquire (by e-mail)
William F. Long, Esquire (by e-mail)
oB01;2267016.1 058956.101;