Opinion
C. A. 20-cv-05055 (CPK/SF)
03-09-2021
ASSERTIO THERAPEUTICS, INC. & APR APPLIED PHARMA RESEARCH SA, Plaintiffs, v. PATRIN PHARMA, INC., Defendant.
JUDGMENT AND ORDER OF PERMANENT INJUNCTION
This action for patent infringement having been brought by Plaintiffs and Counterclaim-Defendants Assertio Therapeutics, Inc. (“Assertio”) and APR Applied Pharma Research SA, (“APR”) (collectively, “Plaintiffs”) and Defendant and Counterclaim-Plaintiff Patrin Pharma Inc. (“Defendant”) for infringement of United States Patent Nos. 7, 759, 394; 8, 097, 651, 8, 927, 604, and 9, 827, 197 (collectively, the “Patents”);
Plaintiffs and Defendant have entered into a Settlement Agreement and related Sublicense Agreement under which Assertio has granted Defendant a sublicense under the Patents, pursuant to the terms and conditions in the Settlement Agreement and Sublicense Agreement; and
Plaintiffs and Defendant have further agreed to the imposition of a Permanent Injunction, pursuant to which Defendant may not commercialize a generic version of Assertio's branded Cambia® product before the Patrin ANDA Launch Date specified in the Sublicense Agreement.
Defendant acknowledges that the filing of Abbreviated New Drug Application No. 214437 (“Defendant's ANDA”) describing a 50 mg strength diclofenac potassium powder for oral solution product would infringe the claims of the Patents and, in the absence of the Sublicense Agreement, the selling, offering for sale, using and/or importing into the United States of such a product (“Defendant's Product”) would infringe each of the Patents. Plaintiffs and Defendant now consent to this Judgment and Order and
IT IS HEREBY ORDERED, ADJUDGED AND DECREED:
1. This Court has jurisdiction over the parties and subject matter of this action.
2. All affirmative defenses, claims and counterclaims raised by Defendant in this action are dismissed with prejudice.
3. Defendant, its officers, agents, attorneys, and employees and those acting in privity or concert with them are hereby enjoined and stopped during the term of the Patents from making, using, selling, offering for sale within the United States or importing into the United States the diclofenac potassium powder for oral solution, 50 mg product described in Defendant's ANDA No. 214437.
4. The foregoing injunction against Defendant shall take effect immediately upon entry of this Judgment and Order by the Court, and shall continue generally with respect to each of the Patents until the expiration of such Patent, unless (i) earlier terminated or modified by further order of this Court, (ii) a final judgment from which no appeal can be taken or is taken is entered by a United States court of competent jurisdiction, that all of the asserted and adjudicated claims of the Patents are unenforceable, or (iii) a final judgment from which no appeal can be or is taken is entered by a United States court of competent jurisdiction, that all of the asserted and adjudicated claims of the Patents are invalid.
5. Nothing in this Judgment shall affect or otherwise delay the effective date of approval of Defendant's ANDA No. 214437.
6. Nothing in this Judgment shall affect the “Paragraph IV certifications” to the Patents in Defendant's ANDA No. 214437, which Paragraph IV certifications Defendant shall be entitled to lawfully maintain pursuant to its sublicense to the Patents.
7. The parties waive all right to appeal from this Judgment and Order.
8. This Court shall retain jurisdiction of this action and over the parties for purpose of enforcement of the provisions of this Judgement and Order
9. Each party is to bear its own costs and attorney's fees.