Free Declaration - District Court of Delaware - Delaware

Case1:04-cv—00884-SLR D0cument71-17 Filed 07/17/2006 Page10f3
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APR. 24.2006 2:51PM SUTHERLAN0 ASBILL NO. 290; P. 2
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E Apni 24, 2006
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Dennis Mondolino, Esq.
Esther Steinhauer, Esq.
McDermott Will &; Emery
340 Madison Avenue
New York, NY 10017
Fax: (212) 547-5444 _
Re: Ferring B.V. v. Teva Pharmaceutical
, Civil Action No.: 04-884-SLR
Dear Counsel:
We have learned that on April 10, 2006, the Federal Circuit denied Fe1·ring’s petition for
rehearing of the February 15, 2006 decision finding that Ferxing obtained the *398 patent through
inequitable conduct. The stipulation between our clients, entered by the Court on March 2, 2006,
provided that the present stay ofthe Fening/Teva matter would remain in effect until the
resolution of the petition for rehearing. Now that Ferring’s petition for rehearing has been
denied, the stay of the case has ended.
Please confirm that Ferring promptly will be seeking to dismiss its Complaint against
1 Teva in accordance to its representation to the Court in connection with summary judgment
{ brieiing: "Should the Federal Circuit affirm the Barr judgment, Ferring will withdraw its
j complaint and dismiss the action? (Ferring B.V.’s Opposition Brief to Teva’s Motion for Leave
{ to File Summary Judgment and Opening Brief in Support of Ferring B.V.’s Motion to Stay dated
i March 15, 2005, p. 2.)
l Q As you are aware, Teva is seeking attorney’s fees Rom Ferring under 35 U.S.C. § 285.
Teva is entitled to its attorney’s fees because Ferring sued it on an unenforceable patent.
{ Ferring’s inequitable conduct provides a sufficient basis ‘“to make a ease exceptional for the
. purpose of awarding attomey fees under § 285." Bruno Independent Living Aids, Inc. v. Acorn
Mobility Services Ltd, 394 F-3d 1348, 1355 (Fed. Cir. 2005). Ferring’s decision to continue to
prosecute this case knowing that the ‘398 patent was unenforceable would provide another
ground to support an exceptional ease determination.
Atlanta ¤ Austin ¤ Houston ¤ New York n Tallahassee n Washington, D0
; PAGE 213*RCVD AT 4I24l2006 2:43:09 PM {EastemDayiightTime]*SVR:RF11*DN1S:5U0*CSID:4048538806*DURATl0N(mm-ss):0140 _

if y Case 1:04-cv—O0884-SLR Document 71-17 F`| d 07/17/
wx NPR. 24. 2006 2:52PM SUTHERLAN0 ASBILL IG 2006 NO_F;Ei%€3$_f%
Dennis Mondolino, Esq.
_ Esther Steinhauer, Esq. _
. `3 April 24, 2006
2 Page 2
Teva’s attorney‘s fees and costs associated with this case total $363,958,lS.
" As an offer of compromise, protected under Federal Rule of Evidence 408, we propose
that Ferring pay Teva’s attomey’s fees and costs in full witbinthirty days ofthe dismissal ofthe
above-captioned case in exchange for (1) Teva’s agreement to dismiss the case (including its
counterclaims) with prejudice; and, (2) Teva’s agreement to limit its claim for attomey’s fees and
costs to $$63,958.18. Our belief is that this proposal is mutually beneficial in that it allows for
an expedited resolution of this ease and does not cause Teva to incur additional fees and costs
while pursuing its attorney’s fees motion. .
~ Please let us know whether you will agree to this proposal no later than close of business,
Tuesday, April 25. If you do not agree, please be advised that will be tiling any necessary
motions (to lift the stay, for entry of summary judgment, and for attorney’s fees) immediately
thereafter.
Sincerely yours,
loses.}/<£t__
_ William F. Long I
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