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Published on: November 11, 2015

District Court Administratively Terminates Motion to Dismiss Because of Pending Inter Partes Reviews (“IPRs”)

In this patent infringement action, Watson Laboratories, Inc.’s (“Watson”) moved to dismiss several counts of the complaint filed by Jazz Pharmaceuticals, Inc. and Jazz Pharmaceuticals Ireland Limited (collectively, “Jazz”). Watson moved to dismiss these counts under Federal Rule of Civil Procedure 12(b)(6) on the grounds that the “Risk Mitigation Patents” claim ineligible subject matter under 35 U.S.C. § 101.

Before ruling on the motions, the district court noted that Petitions for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311-19 had been filed concerning the Risk Mitigation Patents. “These Petitions ask the U.S. Patent and Trademark Office’s Patent Trials and Appeals Board (“PTAB”) to institute IPR review and cancel all claims of the Risk Mitigation Patents under 35 U.S.C. § 103.”

Because of the IPRs, the district court declined to address the motion to dismiss. Over Watson’s objection, the district court determined that it was more efficient to administratively terminate the motion to dismiss. “Pursuant to a status conference with the parties on November 3, 2015, and further in the Court’s discretion and interest to efficiently manage its docket, it is hereby ORDERED that Watson’s motion to dismiss is ADMINISTRATIVELY TERMINATED over Watson’s objection, with leave to re-file at a date to be determined by the Court after the PTAB resolves the pending IPR petitions.”

Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, Case No. 13-391 (ES) (JAD) (D.N.J. Nov. 3, 2015)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.

Stan Gibson

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff

Andrew Shadoff, is a litigation partner and a member of JMBM's Patent Litigation Group. He is experienced in handling patent, copyright and trademark infringement cases. He has obtained wins for his clients at the pleading stage and on summary judgment, and has authored multiple successful briefs in appeals before California's Second District Court of Appeal and the U.S. Court of Appeals for the Ninth Circuit. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.