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Ferring B.V. v. Actavis, Inc.

United States District Court, D. Nevada

July 23, 2014

FERRING B. V. Plaintiff,
v.
ACTAVIS, INC. et al., Defendants.

ORDER

ROBERT C. JONES, District Judge.

This patent infringement action is one of several similar actions that Plaintiff has filed against Defendants in this District. This Court previously held a bench trial on three of the four patents presently at issue. Defendants now move to dismiss, or in the alternative, for a stay of this action pending an appeal from the Court's prior ruling. (ECF No. 17). In their motion to dismiss, Defendants contend that this action is barred by the doctrine of claim preclusion. ( Id. ). For the reasons stated herein, the motion to dismiss is granted in part and denied in part, and the motion to stay is denied.

I. FACTS AND PROCEDURAL HISTORY

On September 6, 2013, Plaintiff Ferring B.V. ("Ferring") filed a complaint for patent infringement (the "Present Complaint" or "Present Action") against Defendants Actavis, Inc. (formerly Watson Pharmaceuticals, Inc.), Watson Laboratories, Inc., Andrx Corp. (a whollyowned subsidiary of Actavis, Inc.), Watson Laboratories, Inc. - Florida, and Watson Pharma, Inc. (collectively, "Watson"). (Compl., Sep. 6, 2013, ECF No. 1). The Present Complaint alleges infringement of U.S. Patent Nos. 7, 947, 739 ("the '739 patent"), 8, 022, 106 ("the '106 patent"), and 8, 273, 795 ("the '795 patent"), and 8, 487, 005 ("the '005 patent") under 35 U.S.C. § 271(a), seeking, inter alia, damages in the amount of $150 million. ( Id. at 5-11).

Ferring previously asserted the '739, '106, and '795 patents against Watson in a consolidated action initiated on July 11, 2011 (the "Prior Action"). (Case No. 3:11-cv-00481-RCJ-VPC). In January 2014, the Prior Action went to a bench trial before this Court, and Ferring ultimately prevailed. ( Id. ). The '005 patent issued on July 16, 2013, ('005 patent, ECF No. 1-1), while the Prior Action was pending, and it was not asserted in that case.

The following undisputed facts are alleged in the Present Complaint: On December 27, 2012, nearly eighteen months after the Prior Action was initiated, the FDA approved Watson's ANDA for its generic tranexamic acid tablets. The next month, despite Ferring's then-pending claims of infringement under § 271, Watson launched its infringing tablets into the market. (Compl., ECF No. 1, at 7-8). In the Present Action Ferring asserts two causes of action: (1) infringement of the '005 patent under § 271(a) and § 271(e); and (2) infringement of the '739, '106, and '795 patents under § 271(a). ( Id. at 5-11). Unlike the Prior Action, which sought only prospective relief, the Present Action seeks, inter alia, damages for Watson's entry into the market. ( Id. ).

On February 28, 2014, Watson moved to dismiss, contending that the causes of action asserted in the Present Complaint are barred under the doctrine of claim preclusion. (Mot. Dismiss, ECF No. 17, at 6-15). Watson further contends that if its motion fails, the Court should stay the Present Action pending the resolution of the appeal from the Prior Action. ( Id. at 15-16). The Court now considers Watson's motion.

II. CLAIM PRECLUSION

Watson argues that Ferring's present causes of action are barred by the Prior Action. The Court disagrees in part. Specifically, the Court concludes that: (1) the causes of action for infringement of the '005 patent survive the instant motion; and (2) the § 271(a) cause of action for infringement of the '739, '106, and '795 patents is barred under the doctrine of claim preclusion.

a. Legal Standard

Claim preclusion, also known as res judicata, "treats a judgment, once rendered, as the full measure of relief to be accorded between the same parties on the same claim' or cause of action.'" McClain v. Apodaca, 793 F.2d 1031, 1033 (9th Cir. 1986) (quoting S. Delta Water Agency v. United States, 767 F.2d 531, 538 (9th Cir. 1985)) (internal quotation marks omitted). Under this doctrine, "[a] final judgment on the merits of an action precludes the parties or their privies from relitigating issues that were or could have been raised in that action." Federated Dep't Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981). The Supreme Court has recognized that the doctrine of res judicata serves the "vital public interest" of having an end to litigation, especially in "view of today's crowded dockets." Id. at 401. Claim preclusion applies when "the earlier suit (1) involved the same claim' or cause of action as the later suit, (2) reached a final judgment on the merits, and (3) involved identical parties or privies." Mpoyo v. Litton Electro-Optical Sys., 430 F.3d 985, 987 (9th Cir. 2005).

b. Analysis

Here, it is undisputed that the Prior Action involved identical parties and reached a final judgment on the merits. Therefore, the only remaining issue is whether the Present Action involves the "same" causes of action. However, "[w]hether two claims for patent infringement are identical is a claim preclusion issue that is particular to patent law.'" Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008) (citing ...


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