Multi-District Panel Centralizes Case at Request of Plaintiff and Moves All Actions to Illinois

June 21, 2012

Plaintiff Forest Laboratories, Inc. ("Forest") moved to centralize their litigation in the District of Delaware. The litigation consisted of two action pending in the District of Delaware and the Northern District of Illinois. The defendants in the Delaware action did not oppose centralization, but one of the defendants suggested selection of the Northern District of Illinois as the transferee district. The defendants in the Northern District of Illinois opposed centralization and, alternatively, suggested selection of the Northern District of Illinois as the transferee forum.

Forest brought the actions in this litigation after various generic drug manufacturer defendants submitted Abbreviated New Drug Application seeking the approval of the Food and Drug Administration to make and sell generic versions of the patented Forest drug Bystolic before the drug's patent expires. Bystolic reportedly contains a beta-adrenergic blocking agent, or "beta blocker," called nebivolol hydrochloride and is indicated for the treatment of hypertension, to lower blood pressure. Alkem and Indchemie oppose centralization by arguing, inter alia, that (1) centralization is unnecessary Alkem and Indchemie oppose centralization by arguing, inter alia, that (1) centralization is unnecessary because only two actions are pending in two districts, and (2) the facts among the different actions will vary, given the difference proposed generic formulations at issue. We respectfully disagree with these arguments. Even though only two actions are pending, the Panel has recognized that "actions involving the validity of complex pharmaceutical patents and the entry of generic versions of the patent holder's drugs are particularly well-suited for transfer under Section 1407." In re Alfuzosin Hydrochloride Patent Litig., 560 F.Supp. 2d 1372, 1372 (J.P.M.L. 2008). Indeed, the Panel has frequently centralized litigation compromised of only two Hatch-Waxman Act cases.

The Panel further found that variations in the proposed formulations of defendants' respective drugs did not weigh strongly against centralization: While there may be some variances in the proposed formulations of defendants' respective drugs, this does not weigh strongly against centralization because all defendants are anticipated to raise similar arguments concerning non-infringement defenses based on the phrase "consisting of" in the '040 patent's claims, which they assert excludes from infringement any products containing more than the listed ingredients in the patent. Moreover, the issue of the obviousness of the '040 patent based on a specific prior art reference (U.S. Patent No. 4,654,362) likely will be involved in the claims of all defendants in both actions.

The Panel then found that the two actions involve common questions of fact: On the basis of the papers filed and hearing session held, we find that these two actions involve common questions of fact, and the centralization under Section 1407 will serve the convenience of the parties and witnesses and promote the just and efficient conduct of the litigation. Both actions share factual allegations with respect to the infringement, validity or enforceability of the '040 patent. Both actions were filed within a day of each other, and neither is particularly advanced. Centralization under Section 1407 will eliminate duplicative discovery (which will likely be international in scope), prevent inconsistent pretrial rulings (particularly on claim construction issues), and otherwise conserve the resources of the parties, their counsel and the judiciary.

Finally, the Panel found that the appropriate transferee district would be the Northern District of Illinois, Given that neither action is significantly advanced (which is unsurprising since Forest filed the actions on successive days in mid-March 2012), either district would be an acceptable transferee forum. On balance, we choose the Northern District of Illinois to serve as the transferee district for pretrial proceedings in this litigation. The district has the support of defendants Indchemie, Alkem and Watson. Further, Judge Elaine E. Bucklo enjoys favorable caseload conditions and, as an experienced transferee judge, we are confident that she will steer this litigation on a prudent course.

In re: Nebivolo ('040) Patent Litigation, Case No. MDL No. 2364 (June 12, 2012)

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