Opinion
00 Civ. 8029 (SHS), 01 Civ. 2109 (SHS), 01 Civ. 8177 (SHS).
March 29, 2006
Herbert F. Schwartz (HS2599) Robert J. Goldman (RG9501) Denise L. Loring (DL2315) Richard A. Inz (RI2926) ROPES GRAY LLP New York, New York, Attorneys for Plaintiffs and Counterclaim Defendants
Edward V. Filardi (EF0184) Constance S. Huttner (CH9702) Douglas R. Nemec (DN0511) SKADDEN ARPS SLATE MEAGHER FLOM LLP New York, New York.
Nicholas L. Coch (NC3541) Michael S. Oberman (MO9838) Donald L. Rhoads (DR6079) KRAMER LEVIN NAFTALIS FRANKEL LLP New York, New York, Attorneys for Defendants and Counterclaim Plaintiff.
[PROPOSED] ORDER FOLLOWING REMAND FROM THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
On January 5, 2004, following a bench trial, this Court entered an Opinion And Order holding that plaintiffs Purdue Pharma L.P.'s, The Purdue Frederick Company's, The P.F. Laboratories, Inc.'s and The Purdue Pharma Company's (collectively, "Purdue's") United States Patent Nos. 5,549,912, 5,508,042 and 5,656,295 ("the Purdue patents") were unenforceable, and enjoining Purdue from enforcing these patents. The Court also held that Endo's proposed 10 mg, 20 mg, 40 mg, and 80 mg oxycodone hydrochloride extended-release tablets would infringe claims 1-4 of U.S. Patent No. 5,549,912; claims 1 and 2 of U.S. Patent No. 5,508,042; and claims 1-4 and 6-10 of U.S. Patent No. 5,656,295. (Docket No. 96). The Court entered a final judgment pursuant to Fed.R.Civ.P. 54(b) on April 7, 2004. (Docket No. 124).
On July 7, 2005, Endo moved this Court for entry of an order granting attorney fees against Purdue based on the Court's judgment of unenforceability. (Docket Nos. 133-35). Endo also submitted that same day a Notice Of Hearing for a bill of costs.
On February 1, 2006, the United States Court of Appeals for the Federal Circuit issued an Opinion and Order vacating this Court's judgment of unenforceability of the Purdue patents and remanding the case for further proceedings. The Federal Circuit's mandate, which issued on February 22, 2006, was filed in the office of this Court's clerk on February 28, 2006. Accordingly, pursuant to this Court's Local Civil Rule 58.1, the Court hereby makes the Federal Circuit Order the Order of this Court.
IT IS HEREBY ORDERED that:
1. The Court's judgment of unenforceability of the Purdue patents in its January 5, 2004 Opinion And Order and April 7, 2004 Rule 54(b) Judgment is vacated, and the case shall be reconsidered by this Court, on remand, in a manner not inconsistent with the opinion of the Federal Circuit dated February 1, 2006.
2. The Court's injunction against enforcement of the Purdue patents in its January 5, 2004 Opinion And Order and April 7, 2004 Rule 54(b) Judgment is vacated.
3. Notwithstanding the vacatur of portions of the January 5, 2004 Opinion And Order and April 7, 2004 Rule 54(b) Judgment, those portions of the Opinion And Order and Rule 54(b) Judgment adjudging that Endo's proposed generic extended-release oxycodone formulations infringe the Purdue patents, having been affirmed by the Federal Circuit, remain in effect.
IT IS SO ORDERED.