Free Response to Motion - District Court of Delaware - Delaware

Case 1 :04-cv-00884-SLR Document 84 Filed 1 1/15/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
F OR THE DISTRICT OF DELAWARE
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FERRING B.V. :
Plaintiff
TEVA PHARMACEUTICALS USA, INC. and Civil Action No. 04-0884-SLR
TEVA PHARMACEUTICAL INDUSTRIES :
LIIVIITED :
Defendants.
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TEVA’S RESPONSE TO FERRING’S MOTION FOR DISMISSAL
WITH PREJUDICE PURSUANT TO FED. R. CIV. P. 41
Ferring’s motion to dismiss is based upon the argument that, under Super Sack Mgr ’g
Corp. v. Chase Packaging Corp., 57 F.3d 1054 (P ed. Cir. 1995), no case or controversy remains
over Teva’s counterclaims. To date, Ferring only has offered to dismiss with prejudice.
Feiring’s argument is premature, until and unless Ferring covenants not to sue Teva for any past
or present conduct related to the ‘398 patent. As the Federal Circuit noted in Super Sack, "[t]he
legal effect of Super Sacl<’s promise not to sue is the heart of this matter .... " Ia'. at 1059. Under
Super Sack, a court is divested of jurisdiction over patent counterclaims where the counterclaim- A
defendaiit/infringement—pIaintiff promises not to sue for any past or present acts of infringement.
Id.; accord, Ciber, Inc. v. Ciber Consulting, Inc., 326 F. Supp.2d 886, 892 (N.D. Ill. 2004-)(no
case or controversy over counterclaims when a trademark inningement plaintiff had "issued a
statement of non—liability" as to the defendants’ actions).
A resolution to this matter seemingly more suitable and more efficient than attempting to
negotiate the terms of a covenant not to sue would be the entry of judgment in favor of Teva on
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Case 1 :04-cv-00884-SLR Document 84 Filed 1 1/15/2006 Page 2 of 4
Teva’s claim that the patent is unenforceable, on the principle of collateral estoppel. Teva
previously filed a motion seeking judgment on this basis, and Teva’s motion remains pending.;
(D1. # 35.) Ferring opposed Teva’s motion by moving for a stay and arguing that the Barr case
had not been litigated fully and that there were reasons to doubt the "quality and fairness" of the
district court decision in the Barr case. (D.I. # 40, pp. 8-14.) Now that the Federal Circuit has
afnrmed the Barr decision and the Supreme Court has denied certiorari, there can be no doubt
that the Barr case has been litigated fully, that the judgment in that case is final, that Ferring has
had a full and fair opportunity to be heard in court, and that it has not been the recipient of any
procedural unfairness.
Whichever procedural mechanism the Court employs to terminate the case the Court will
retain jurisdiction to decide Teva’s pending motion for attorney’s fees (as Ferring
acknowledges), (D.l.#61) and Teva as the prevailing party will also have the right to seek costs
in accordance with Rule 54(d)(1) and Local Rule 54.1. See Ross v. Horn, 598 F.2d 1312, 1322
(3d. Cir. 1979).
Respectfully submitted,
Yfxéinc CO§AWAY é§ARGATT & TAYLoR LLP
Josy W. Ingersoll (No. 1088)
Karen Keller (No. 4489)
The Brandywine Building
1000 West Street, 17th Floor
P.O. Box 391 I
Wilmington, Delaware 19899—039l
Phone: 302-571-6600
j ingers0ZZ@ycst. com
l The Court granted Ferring’s cross-motion for a stay, but did not deny Teva’s summary judgment
motion. (D.I. #48.)
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Case 1:04-cv-00884-SLR Document 84 Filed 11/15/2006 Page 3 of 4
William F. Long
N.E.B. Minnear
SUTHERLAND Asmu. & BRENNAN LLP
999 Peachtree Street
Atlanta, Georgia 303098996
Phone: 404-853-8000
Attorneys for Defendants Teva Pharmaceutical
Industries Ltd. and Teva Pharmaceuticals USA, Inc.
Dated: November 15, 2006
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Case 1:04-cv-00884-SLR Document 84 Filed 11/15/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I, Josy W. Ingersoll, Esquire, hereby certify that on November 15, 2006, I caused to be
electronically filed a true and correct copy ofthe foregoing document with the Clerk of the Court
using CM/ECF, which will send notification that such filing is available for viewing and
downloading to the following counsel of record:
Francis DiGiovanni, Esquire
Connolly Bove Lodge & Hutz LLP
The Nemours Building
1007 North Orange Street
Wihnington, DE 19801
I further certify that on November 15, 2006, I caused a copy of the foregoing document to
be served by hand delivery on the above—1isted counsel of record and on the following non-
registered participants in the manner indicated:
BY E—MAIL
Dennis J. Mondolino, Esquire
McDermott Will & Emery
340 Madison Avenue
New York, NY 10017
YOUNG CONAWAY STARGATT & TAYLOR, LLP
IE5 W. i§gersol1i;§o. 1088)
The Bran ywine Building
1000 West Street, 17th Floor _
Wilmington, Delaware 19801 "
(302) 571-6600
[email protected]
Attorneys for Defendants Teva Pharmaceutical
Industries Ltd. and Teva Pharmaceuticals USA, Inc.
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