SANOFI-AVENTIS DEUTSCHLAND GMBH AND AVENTIS PHARMA S.A., Plaintiffs-Appellees, AND ABBOTT GMBH & CO. KG, AND ABBOTT LABORATORIES, Plaintiffs-Appellees,
GLENMARK PHARMACEUTICALS INC., USA (now known as Glenmark Generics., Inc., USA) AND GLENMARK PHARMACEUTICALS LTD., Defendants-Appellants
Appeal from the United States District Court for the District of New Jersey in No. 07-CV-5855, Judge Dennis M. Cavanaugh.
JOHN ALLCOCK, DLA Piper LLP, (US) of San Diego, California, argued for all plaintiffs-appellees. With him on the brief were STUART E. POLLACK and STANLEY J. PANIKOWSKI, for Abbott GmbH & Co. Kg, et al. and BENJAMIN C. HSING and SAPNA W. PALLA, Kaye Scholer, LLP, of New York, New York, for Sanofi-aventis Deutschland GmbH, et al.
JAMES GALBRAITH, Kenyon & Kenyon LLP, of New York, New York, argued for defendants-appellants. With him on the brief were HUIYA WU, LEE B. SHELTON and MICHAEL S. CHANG.
Before NEWMAN, LINN, and WALLACH, Circuit Judges.
Newman, Circuit Judge.
This patent infringement suit concerns the antihypertension drug having the brand name Tarka® . Tarka® is a combination of two active ingredients into a single dosage product: the angiotensin converting enzyme (ACE) inhibitor trandolapril, and the calcium channel blocker (also called " calcium antagonist" ) verapamil hydrochloride. The combination drug is covered by United States Patent No. 5,721,244 (the '244 patent) and is owned by or exclusively licensed to Sanofi-Aventis Deutschland GmbH (a company of Germany), Aventis Pharma S.A. (a company of France); Abbott GmbH (a company of Germany), and Abbott Laboratories and Abbott Laboratories Inc. (United States companies) (collectively " Plaintiffs" ).
The New Drug Application (NDA) for the Tarka® product was approved by the Food and Drug Administration in 1996 and acquired by Abbott Laboratories in 2001. In 2007 the defendants Glenmark Pharmaceuticals Inc. and Glenmark Pharmaceuticals Ltd. (collectively " Glenmark" ) filed an abbreviated new drug application (ANDA) for the generic counterpart of this product. Since the '244 patent had not expired, Glenmark filed a Hatch-Waxman " Paragraph IV Certification," leading to the filing by Plaintiffs of this infringement suit.
Launch of Glenmark's generic product was stayed for 30 months, as the statute
provides. 21 U.S.C. § 355(j)(5)(B)(iii). After the stay expired in 2010, Plaintiffs moved for a preliminary injunction, which the district court denied. In June 2010 Glenmark launched its generic product " at-risk," while this litigation proceeded in the district court.
Trial was to a jury. Glenmark admitted infringement, and the jury held that the '244 patent had not been proved invalid. The jury awarded $15,200,000 in lost profits and $803,514 in price erosion damages. Post-trial motions were denied, and judgment was entered on the verdict. The district court retained authority to assess post-verdict damages if this court sustained the judgment on appeal.
Glenmark does not appeal the quantum of damages, but argues (1) that the '244 patent is invalid, (2) that Glenmark is entitled to a new trial based on a prejudicial jury instruction on evidence spoliation, and (3) that no damages should be awarded due to lack of standing of the Abbott United States companies. Plaintiffs defend the judgment, and also state that this court lacks jurisdiction to entertain this appeal because the district court's judgment was not final.
We conclude that jurisdiction is proper, and affirm the district court's judgment and related rulings.
Within 30 days after the district court denied Glenmark's post-verdict motions, Glenmark filed a notice of appeal. Plaintiffs state that this appeal is premature because the district court did not issue a document entitled " final judgment" and retained authority to award post-judgment damages; thus Plaintiffs argue that there is no appellate jurisdiction.
Glenmark responds that on September 30, 2011 the district court entered an Order that disposed of every pending claim and defense except the final calculation of damages. The Order (1) denied Glenmark's pre-verdict Rule 50(a) motion, (2) denied Glenmark's motions for post-verdict judgment as a matter of law on the issues of standing and double patenting, and (3) granted Plaintiffs' request for an injunction. ECF No. 379. Glenmark timely filed a renewed motion for judgment as a matter of law under Rule 50(b), which the district court denied. ECF No. 410. Glenmark appealed within 30 days of that denial.
Glenmark points out that 28 U.S.C. § 1292(c)(2) recognizes finality for purposes of appeal although the accounting of damages may not be complete. The statute assigns the Federal Circuit jurisdiction of:
§ 1292(c)(2)-- an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting.
In Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1317 (Fed. Cir. 2013) (en banc), this court reiterated that " an accounting" includes the determination of damages.
The jury found the damages for the period covered by the evidence at trial. The district court's issuance of an Order closing the case, with provision for an accounting of any additional damages that
may accrue if the decision is affirmed on appeal, does not negate finality of a judgment that meets the terms of § 1292(c)(2). No " magic words" are needed to confer final judgment. See Local Union No. 1992 of Int'l Bhd. of Elec. Workers v. Okonite Co., 358 F.3d 278, 285 (3d Cir. 2004) (" The order's denomination as an 'order,' rather than a 'judgment,' does not mean that it fails to satisfy the separate document requirement" of the final judgment rule.); Hill v. Potter, 352 F.3d 1142, 1144 (7th Cir. 2003) (" The test for finality is . . . whether the district court has finished with the case." ). ...