Free Motion to Stay - District Court of Delaware - Delaware

Case 1:08-cv—OOO66-JJF Document 7 Filed O2/26/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE =
THE PROCTER & GAMBLE COMPANY, ) n
Plaintiff, )
v. 3 C.A. No.: 08-066-JIF
TEVA PHARMACEUTICALS USA, INC., l
Defendant. T
JOINT MOTION TO STAY ALL PROCEEDINGS
Plaintiff The Procter & Gamble Company ("Pr0cter & Gamble") and Defendant Teva
Pharmaceuticals USA, Inc. (“Teva USA") move for an order staying all proceedings in this case
until the Court issues an opinion concerning the outcome of the trial in The Procter & Gamble
Co. v. Teva Pharmaceuticals USA, Inc. (N o. l:04—cv—OOO940—JJF) (the “Pending Action"), a
related case pending before this Court involving the same patent and similar legal and factual
claims.
In support of this motion, Procter & Gamble and Teva USA state as follows:
l. The present case is a patent infringement action involving Procter & Gamble’s
U.S. Patent No. 5,583,122 (the "‘l22 Patent"). It relates to Teva USA’s Abbreviated New Drug
Application No.79-215, submitted to the FDA under Section 505(j) of the Federal Food, Drug O
and Cosmetic Act (21 U.S.C. § 3556)), seeking approval to engage in the commercial
manufacture, use, and sale of tablets containing 75 mg of risedronate sodium, a generic version i
ofthe 75 mg form of ACTONEL® tablets, before the expiration date of the ‘l22 Patent.
2. This action is related to a patent infringement action currently pending before this
Court, The Procter & Gamble C0. v. Teva Pharmaceuticals USA, Inc. (No. 1:04-cv—0O0940—JJF)
(the "Pending Action"), which also involves the ‘l22 Patent. Like the present action, the
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Case 1:08-cv—OOO66-JJF Document 7 Filed O2/26/2008 Page 2 of 4
Pending Action arises under 35 U.S.C. §§ 271 and 281. The Pending Action relates to ANDA
No. 77-132 tiled by Teva USA with the FDA for approval to market a generic version of Procter
& Gamble’s ACTONEL® drug product in 5 mg, 30 mg, and 35 mg forms. l
3. On November 6-8, 2006, this Court held a trial on the merits in the Pending
Action.
4. Prior to trial in the Pending Action, Teva USA stipulated for purposes of that
litigation that its commercial marketing of its products at issue in the Pending Action would
infringe claims 4, 16, and 23 of the ‘122 Patent if those claims were valid. As a result, the sole
issue litigated during that trial was the validity of those claims.
5. Teva USA agrees, for purposes of this action, that its commercial marketing of its
proposed generic version of the 75 mg form of ACTONEL® tablets would also infringe claims
4, 16, and 23 of the ‘122 Patent if those claims are valid. As a result, the only issue to be
litigated in this action is the validity of those claims.
6. Procter & Gamble and Teva USA agree that, subject to any appeal, the Court’s
determination in the Pending Action of the validity of claims 4, 16, and 23 of the ‘ 122 Patent will
determine the validity of those claims in this case as well.
7. As a result, a stay of this case pending this Court’s decision in the Pending Action
would promote judicial efficiency by conserving the resources of the Court and the parties. See
Maloney v. Gordon, 328 F. Supp. 2d 508, 513 (D. Del. 2004) (where related case may i
“potential1y eliminate the need to litigate some or all of the issues in the case," staying instant
case preserves judicial resources); Commissoriot A L ’Erzergie Atomique v. Dell Computer Corp.,
No. Civ. A. 03-484—KAJ, 2004 WL 15543 82, at *3 (D. Del. May 13, 2004) (granting motion to
stay patent infringement proceedings against OEM distributors and retailers pending resolution
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Rtri-2.257245-1 (

Case 1 :08-cv-00066-JJF Document 7 Filed O2/26/2008 Page 3 of 4 `
_ of litigation against manufacturers involving the same patents to "conserv[e] judicial resources
and expense to the parties"); United Sweetener USA, Inc. v. Nutmsweet Co., 766 F. Supp. 212,
217 (D. Del. 1991) (setting forth test for propriety of a stay). 1
8. The parties agree that when the Court enters judgment in the Pending Action, it
may immediately enter a judgment in this case that is identical to the judgment in the Pending
Action with respect to the validity and infringement of claims 4, 16 and 23 ofthe ‘122 Patent.
9. This action is newly tiled, and no trial date has been set. Accordingly, the stay
will be entered before the Court or the parties expend substantial resources.
10. For these reasons, Procter & Gamble and Teva USA respectfully request that the
Court enter the proposed order submitted herewith.
/s/ Steven J. Fineman /s/ Karen L. Pascale
Frederick L. Cottrell, 111 (#2555) Josy W. Ingersoll (#1088) -
Steven J. Fineman (#4025) Karen L. Pascale (#2903)
Richards, Layton & Finger, P.A. Adam W. Poff (#3990)
One Rodney Square Young, Conaway, Stargatt & Taylor
P.O. Box 551 The Brandywine Building E
Wilmington, DE 19899-0551 1000 West Street, 17th Floor 5
302-651-7700 Wilmington, DE 19899-0391
[email protected] (302) 571-6672
[email protected] [email protected] j
Attorneys for The Procter & Gamble Company [email protected] j
[email protected] -
Attorneys for Defendant Teva Q
Pharmaceuticals U.S.A., Inc.
Dated: February 26, 2008 Dated: February 26, 2008
OF COUNSEL: OF COUNSEL:
Hollie L. Baker J arnes Galbraith ‘
Vinita Ferrera Maria Luisa Palmese { .
Wilmer Cutler Pickering Hale and Dorr LLP Antony Pfeffer
60 State Street Kenyon & Kenyon LLP .
Boston, Massachusetts 02109 One Broadway 1
(617) 526-6000 New York, NY 10004
(212) 425-7200 p
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Rm-2257245-1

Case 1:08-cv—OOO66-JJF Document 7 Filed O2/26/2008 Page 4 of 4
David B. Basseli
Wilmer Cutler Pickering Hale and Dorr LLP
399 Park Avenue Y
New York, New York 10022
(212) 230-8800 I
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RLF1-3257345-1

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