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Endo Pharms., Inc. v. Roxane Labs., Inc.

United States District Court, S.D. New York

November 14, 2014

ENDO PHARMACEUTICALS, INC., Plaintiff,
v.
ROXANE LABORATORIES, INC., Defendant

For Endo Pharmaceuticals Inc., Plaintiff: Carl Gismervig, Jonathan D Loeb, PRO HAC VICE, Heidi Anita Guetschow, Dechert LLP, Mountain View, CA; George G. Gordon, PRO HAC VICE, Dechert LLP (PHILADELPHIA), Philadelphia, PA; Jeffrey Thomas Fisher, Joshua Isaac Sherman, Dechert, LLP (NYC), New York, NY; Martin J. Black, PRO HAC VICE, Dechert LLP, US, PA; Robert D Rhoad, PRO HAC VICE, Dechert, LLP (NJ), Princeton, NJ.

For Johnson Matthey, Inc., Non-Party Movant, Movant: Suzan Jo, Duane Morris, LLP (NYC), New York, NY.

For Roxane Laboratories, Inc., Defendant: Amanda K. Kelly, Scott Bennett Feder, Wasim K. Bleibel, PRO HAC VICE, Keith D. Parr, Myoka Kim Goodin, Locke Lord LLP, Chicago, IL; Paul Brian Sudentas, Locke Lord LLP (NYC), New York, NY; Alan B. Clement, Hedman & Costigan, P.C., New York, NY.

For Roxane Laboratories, Inc., Counter Claimant: Myoka Kim Goodin, Locke Lord LLP, Chicago, IL; Alan B. Clement, Hedman & Costigan, P.C., New York, NY.

For Endo Pharmaceuticals Inc., Counter Defendant: Carl Gismervig, PRO HAC VICE, Jonathan D Loeb, Heidi Anita Guetschow, Dechert LLP, Mountain View, CA; George G. Gordon, PRO HAC VICE, Dechert LLP (PHILADELPHIA), Philadelphia, PA; Joshua Isaac Sherman, Dechert, LLP (NYC), New York, NY; Martin J. Black, Dechert LLP, US, PA; Robert D Rhoad, Dechert, LLP (NJ), Princeton, NJ.

OPINION

Thomas P. Griesa, United States District Judge.

Before the court is defendant's motion for leave to amend its answer to the complaint. Defendant seeks leave to plead three additional defenses to plaintiff's claims: (1) an affirmative defense of express license; (2) an affirmative defense of implied license; and (3) an affirmative defense of unclean hands. For the following reasons, defendant's motion is denied in part and granted in part.

Background

Plaintiff sells Opana® ER tablets which contain the painkiller oxymorphone. On May 15, 2013, plaintiff sued defendant claiming that defendant's plan to sell generic oxymorphone tablets infringed on its patents numbered 7, 851, 122 (the " 122 patent"), 8, 329, 216 (the " 216 patent"), and 7, 851, 482 (the " 482 patent"). Plaintiff sought a preliminary injunction to prevent defendant from marketing and offering the generic tablets. Defendant opposed the preliminary injunction, arguing that an earlier settlement in a case involving different patents, memorialized in a settlement and license agreement, gave it an express and implied license to sell the generic drugs. This court denied plaintiff's motion for a preliminary injunction on estoppel grounds, reasoning that plaintiff, having agreed in the settlement and license agreement to allow defendant to use the patents at issue there, could not now assert new patents against defendant.

Plaintiff appealed to the United States Court of Appeals for the Federal Circuit. The Court of Appeals ruled for plaintiff and vacated the denial of its motion for a preliminary injunction. The Court of Appeals held that as a matter of law: (1) " Roxane's express license arguments are meritless, " Endo Pharms., Inc. v. Actavis, Inc., 746 F.3d 1371, 1374 (Fed. Cir. 2014); and (2) " the district court erred . . . in finding legal estoppel in favor of . . . Roxane." Id. at 1377.

Despite the Court of Appeals' ruling, defendant filed a motion with this court for leave to amend its answer to the complaint to add express and implied license defenses with regard to the '122 and '216 patents, and also a defense of unclean hands.

Discussion

The Federal Rules of Civil Procedure allow a party to amend its pleading once as a matter of course within 21 of serving it. Fed.R.Civ.P. 15(a)(1). After 21 days have elapsed, the party may amend its pleading " only with the opposing party's written consent or the court's leave." Fed.R.Civ.P. 15(a)(2). The court should give such leave freely " when justice so requires." Id. However, leave should not be granted where the amendment is unduly delayed or brought in bad faith, where it would prejudice the opposing party, or where it would be futile. Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962). An amendment to an answer will be futile if it fails to show at least ...


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