Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-00884-SLR Document 78 Filed 10/31/2006 Page 1 of 2
YOUNG CONAWAY STARGATT & TAYLOR, LLP
THE BRANDYWINE Burrows
1000 VVEST STREET, 17TH Frooa
Josy VV. INGERSOLL (NO. lO8S) \VjLMjNgTON, DELAWARE 1980] (302) 571-6600
DTRECT Dr,-xr: 302-571-6672 (302) 571-1253 FAX
omscr E.-xx: 302-576-3301 pg, BOX 39; (800) 253-2234 (DE ONLY)
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October 31, 2006
BY E-FILING
The Honorable Sue L. Robinson
United States District Court
844 King Street
Wilmington, DE 19801
Re: Ferring B. V v. Teva Pharmaceuticals USA, Inc., et al.
Civil Action No. 04-884-SLR
Dear Chief Judge Robinson:
Please find attached the United States Supreme Court’s denial of Ferring’s petition for
certiorari in the matter of F erring B. V & Aventis Pharmaceuticals Inc. v. Barr Laboratories, [nc.
The denial of Ferring’s petition for certiorari bears directly on the two pending motions
before the Court: (1) Teva’s Motion to Dismiss and For An Award of Attorney’s Fees and Costs
(DI. #61), and (2) Ferring’s Cross Motion To Stay Proceedings or, in the Alternative, Rule
41(a)(2) Dismissal Without Prejudice (D.I. #69). The first issue raised by these motions is
whether this case should be dismissed with prejudice in light of the Barr proceedings, as Teva
proposes, or whether it should be stayed or dismissed without prejudice, as Fencing proposes.
The second issue raised in these motions is whether Teva is entitled to collect its attorney’s fees
and costs in light of Ferring’s inequitable conduct and maintenance of this litigation despite of its
knowledge thereof
The denial of certiorari makes clear that this case should be dismissed with prejudice
because Ferring’s ‘398 patent is unenforceable and Ferring committed inequitable conduct in the
prosecution of that patent. The decision in the Barr case, which was affirmed by the Federal
Circuit and as to which the Supreme Court denied certiorari, is resjudicata in this case against
Ferring and precludes it from continuing to pursue claims against Teva. Ferring cannot attempt
now to re—litigate the enforceability of its ‘398 patent after its multiple unsuccessful attempts in
the Barr case.
The denial of certiorari also supports Teva’s motion for attorney’s fees. Teva
previously pointed out that a clear case of inequitable conduct, such as this one, warrants entry of
attorney’s fees. (See D.I. #62 & 65.) In response, Ferring claimed there was a "close case" as to
Teva’s inequitable conduct claims and strongly suggested that the Supreme Court would grant
certiorari and reverse the Federal Circuit and the trial court’s summary judgment finding, thereby
validating Ferring’s argument that this case was somehow close. The denial of Ferring’s petition
012.01:222-i629.i 052956.101;

Case 1:04-cv-00884-SLR Document 78 Filed 10/31/2006 Page 2 of 2
YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Sue L. Robinson
October 31, 2006
Page 2
for certiorari adds another judgment by another judicial body — this one the highest in the land -
confirming that Judge Brieant appropriately entered summary judgment of inequitable conduct.
In sum, the denial adds to the mounting body of evidence that gy reasonable factfinder would
have found that Ferring committed inequitable conduct.
Teva respectfully submits that its Motion to Dismiss and For An Award of
Attorney’s Fees and Costs (D1. #61) can now be granted and Ferring’s cross-motion can be
denied as moot.
Respectfully submitted,
J osy W. Ingersoll (No. 1088)
J WI:cg
Enclosure
cc: Clerk of the Court (by e-filing and hand delivery)
Francis DiGiovanni, Esquire (by e-filing and hand delivery)
Dennis J. Mondolino, Esquire (by e—mail)
Christine A. Pepe, Esquire (by e—mai1)
William F. Long, Esquire (by e—mail)
DB0l:2224629.l 0ss9s6.i012