Free Response to Motion - District Court of Delaware - Delaware

Case 1:07-cv-00552-SLR

Document 27

Filed 02/07/2008

Page 1 of 2

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE __________________________________________ ) ELAN CORPORATION, PLC and ) ELAN PHARMA INTERNATIONAL LTD., ) ) Civil Action No. 07-552-SLR Plaintiffs ) v. ) ) TEVA PHARMACEUTICALS USA, INC. ) ) Defendant. ) __________________________________________) RESPONSE TO PLAINTIFF'S CITATION OF SUBSEQUENT AUTHORITY Pursuant to the Court's permission, Defendant Teva Pharmaceuticals USA, Inc., by and though its undersigned counsel, hereby briefly responds to Elan's Citation of Subsequent Authority in Support of Its Motion to Dismiss and to Strike filed in this action. [Docket No. 24]. Elan claims that the Federal Circuit's January 17, 2008 Opinion in Innogenetics, N.V. v. Abbott Labs., Nos. 07-1145-1161, 2008 U.S. App. LEXIS 976 (Fed. Cir. Jan. 17, 2008) supports its motion to dismiss Teva's inequitable conduct charge. Elan errs in failing to appreciate the distinction between mere attorney argument and the intentional mischaracterization of a material fact. There is no question that the latter can constitute inequitable conduct. Innogenetics does not change this rule of law. In Innogenetics, the prosecuting attorney submitted prior art references (namely, the Cha PCT application and a search report identifying the Cha PCT application) to the Patent Office, and then generally argued that "the references do not relate to the invention and, therefore, further discussion of the same is not necessary." Id. at *36. Innogenetics' prosecuting attorney, however, later admitted that he had not examined the prior art references. Id. The argument he submitted to the Patent Office was simply boilerplate language he used in other prior art statements submitted to the Patent Office. Id. Innogenetics'

SL1 793251v1/030421.00185

Case 1:07-cv-00552-SLR

Document 27

Filed 02/07/2008

Page 2 of 2

attorney never intentionally misrepresented an underlying material fact of the Cha PCT application; he merely argued generally that the reference did not relate to the invention he was prosecuting. The district court ruled -- notably, on summary judgment, not on a motion to dismiss -- that the attorney's comments did not constitute a material misrepresentation, but rather "mere attorney argument." Id. The Federal Circuit affirmed, highlighting that the

defendant had "failed to demonstrate any genuine issue of material fact as to the materiality of Innogenetics' representation..." Id. at *36. Here, Teva pled that Elan's prosecuting attorney intentionally misrepresented a material fact underlying a key prior art reference, the Mehta reference. (See Teva's Answer and

Counterclaims p. 7, ¶14-17.) For the purposes of a motion to dismiss, Teva's allegations must be taken as true. If Teva's allegations are proven, the applicants of the patents-in-suit committed inequitable conduct -- Innogenetics does not hold otherwise.

Dated: February 7, 2008

STEVENS & LEE, P.C.

/s/ Joseph Grey Joseph Grey (No. 2358) Thomas G. Whalen, Jr. (No. 4034) 1105 N. Market Street, 7th Floor Wilmington, DE 19801 Tel: (302) 654-5180 Fax: (302) 654-5181 E-mail: [email protected] [email protected] Mark D. Schuman Jeffer Ali Carlson, Caspers, Vandenburgh & Lindquist 225 South Sixth Street, Suite 3200 Minneapolis, MN 55402 TEL: (612) 436-9600 FAX: (612) 436-9605 E-MAIL: [email protected] Attorneys for Defendant TEVA Pharmaceuticals USA, Inc. 2
SL1 793251v1/030421.00185

Case 1:07-cv-00552-SLR

Document 27-2

Filed 02/07/2008

Page 1 of 1

CERTIFICATE OF SERVICE I, Joseph Grey, hereby certify that, on this 7th day of February, 2008, and in addition to the service provided by the Court's CM/ECF system, true and correct copies of the foregoing Response to Plaintiff's Citation of Subsequent Authority were served by first class United States mail, postage prepaid, upon counsel for the Plaintiff at the following address:

Jack B. Blumenfeld, Esquire Maryellen Noreika, Esquire Richard J. Bauer, Esquire Morris, Nichols, Arsht & Tunnell, LLP 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347

/s/ Joseph Grey Joseph Grey

SL1 793251v1/030421.00185