Merz Pharmaceuticals, LLC et al v. Taro Pharmaceuticals U.S.A., Inc. et al
| Merz North America, Inc. and Merz Pharmaceuticals, LLC |
| Taro Pharmaceutical Industries Ltd. and Taro Pharmaceuticals U.S.A., Inc. |
| 1:2015cv10168 |
| December 31, 2015 |
| US District Court for the Southern District of New York |
| Foley Square Office |
| XX Out of State |
| William H Pauley |
| Patent |
| 35 U.S.C. § 271 |
| None |
Docket Report
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| Filing 29 AO 120 FORM PATENT - CASE TERMINATED - SUBMITTED. In compliance with the provisions of 35 U.S.C. 290, the Director of the U.S. Patent and Trademark Office is hereby advised that a final decision was rendered on 11/9/2017 in a court action filed on the following patent(s) in the U.S. District Court Southern District of New York. Director of the U.S. Patent and Trademark Office electronically notified via Notice of Electronic Filing (NEF). (anc) |
Filing 28
STIPULATION AND ORDER OF DISMISSAL: Pursuant to Rules 4l(a)(2) and (c), Fed. R. Civ. P., IT IS HEREBY STIPULATED AND AGREED, by and among the undersigned counsel and parties that all claims asserted by Plaintiff Sebela International Limited against Defendants Taro Pharmaceuticals U.S.A., Inc. and Taro Pharmaceutical Industries Ltd. (collectively "Taro") be dismissed with prejudice and, subject to the terms of the Consent Judgment in this Litigation, all affirmative defenses and counterclaims are hereby dismissed with prejudice with respect to the Taro product that is the subject of ANDA No. 208201. Each party shall bear its own costs and fees. SO ORDERED. (Signed by Judge William H. Pauley, III on 11/9/2017) Filed In Associated Cases: 1:15-cv-03720-WHP, 1:15-cv-10168-WHP(anc)
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Filing 27
CONSENT JUDGMENT AND DISMISSAL ORDER: IT IS HEREBY ORDERED, ADJUDGED AND DECREED that: Subject matter jurisdiction, personal jurisdiction, and venue are all proper in this Court. Sebela has charged Taro with infringement of the Patents-in-Suit in connection with Taro's submission of ANDA No. 208201 to the FDA. Solely for purposes of resolving the Litigation, and solely with respect to the Taro product that is the subject of ANDA No. 208201 ("Taro Product"), Taro has acknowledged infringement and validity of the Patents-in-Suit. For the avoidance of doubt, Taro does not agree that the Patents-in-Suit are infringed by any product other than the Taro Product and nothing herein or in the Dismissal Order shall preclude Taro from asserting the invalidity, non-enforceability, and/or non-infringement of the Patents-in-Suit in any future litigations or other proceedings concerning any product other than the Taro Product, and all such claims are reserved; and as further set forth herein. The Clerk of the Court is directed to enter this Consent Judgment and Dismissal Order forthwith. SO ORDERED. (Signed by Judge William H. Pauley, III on 11/9/2017)***Pursuant to instructions from Chambers, Filed In Associated Cases: 1:15-cv-03720-WHP, 1:15-cv-10168-WHP(anc) Modified on 11/13/2017 (anc).
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Filing 26
PARTIES' JOINT STIPULATION AND ORDER REGARDING SIXTY-DAY STAY: The present consolidated actions shall be stayed for sixty days through and including to August 23, 2016; On August 26, 2016, the Parties shall file with the Court a Joint Status Report in the Lead Case, which Joint Status Report shall include a proposed case schedule moving forward in the event that a settlement has not been reached; In the event that no settlement is reached and a proposed case schedule is file pursuant to paragraph 2, above, the Parties will work together to propose modified deadlines to the current Scheduling Order in the Lead Case of April 1, 2016 (Dkt. No. 43), subject to the Court's approval; and At the Court's discretion, the Parties will make themselves available for an in-person status conference, if the Court so desires, as soon as practical after the sixty-day stay expires on August 23, 2016. Case stayed. (Signed by Judge William H. Pauley, III on 6/27/2016) ***As per chambers, Filed In Associated Cases: 1:15-cv-03720-WHP, 1:15-cv-10168-WHP(tn)
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Filing 24
ORDER: This matter is before the Court on the parties' Stipulation to Consolidate Cases ("the Stipulation"). The Court, having considered this matter and the record in this case, ORDERS as follows: The Stipulation is GRANTED in its entirety. IT IS HEREBY ORDERED THAT the following related cases presently before the Court are consolidated for all purposes, including trial: 1. Merz Pharmaceuticals, LLC, and Merz North America, Inc. v. Taro Pharmaceuticals U.S.A., Inc. and Taro Pharmaceutical Industries Ltd., Case No. 15-cv-3720-WHP (the "Lead Case"); and 2. Merz Pharmaceuticals, LLC, and Merz North America, Inc. v. Taro Pharmaceuticals U.S.A., Inc. and Taro Pharmaceutical Industries Ltd., Case No. 15-cv-10168-WHP. IT IS FURTHER ORDERED that all pleadings, motions, and other papers for all purposes shall be filed in the Lead Case. (Signed by Judge William H. Pauley, III on 4/12/2016) Filed In Associated Cases: 1:15-cv-03720-WHP, 1:15-cv-10168-WHP(mro)
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Filing 25
STIPULATION AND ORDER TO CONSOLIDATE CASES: Pursuant to Rule 42(c) of the Federal Rules of Civil Procedure, plaintiffs Merz Pharmaceuticals, LLC, and Merz North America, Inc. ("Merz"), and defendants Taro Pharmaceuticals U.S.A., Inc. and Taro Pharmaceutical Industries Ltd. ("Taro"), respectfully submit this Stipulation to consolidate this action for all purposes, including trial, with Civil Action No. 15-cv-10168-WHP, Merz Pharmaceuticals, LLC, and Merz North America, Inc. v. Taro Pharmaceuticals USA., Inc. and Taro Pharmaceutical Industries Ltd., filed in this district and also assigned to Judge William H. Pauley III. In support of this Stipulation, Merz and Taro state as follows: This action was filed on May 14, 2015. Taro filed an Answer and Counterclaim on August 13, 2015, and Merz filed an Answer to the Counterclaim on September 8, 2015. Civil Action No. 15-cv-10168-WHP was filed on December 31, 2015, and involves the same parties. Taro filed an Answer and Counterclaim on February 10, 2016, and Merz filed an Answer to the Counterclaim on March 2, 2016. Both this action and Civil Action No. 15-cv-10168-WHP allege that Taro infringes patents listed in the Orange Book for Merz's NAFTIN 2%, Gel product based on Taro's submission of Abbreviated New Drug Application ("ANDA") No. 208201. The application that led to the issuance of the patent asserted in Civil Action No. 15-cv-10168-WHP (U.S. Patent No. 9,161,914) is a continuation of the application that led to the issuance of the patent asserted in this action (U.S. Patent No. 8,778,365) and shares a nearly identical specification. In view of the overlapping subject matter of this action and Civil Action No. 15-cv-10168-WHP, the parties desire to consolidate the actions for all purposes, including trial, to promote the efficient resolution of the parties' dispute and judicial economy. The parties agree that the protective order entered in Civil Action No. 15-cv-1720-WHP should govern Civil Action No. 15-cv-10168-WHP and that, upon consolidation, the protective order shall apply to the consolidated action. Counsel for the parties have met and conferred and all parties to this case and to related Civil Action No. 15-cv-10168-WHP consent to the consolidation of these cases in accordance with the proposed order filed herewith. (Signed by Judge William H. Pauley, III on 4/12/2016) Filed In Associated Cases: 1:15-cv-03720-WHP, 1:15-cv-10168-WHP(mro)
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| CONSOLIDATED MEMBER CASE: Create association to 1:15-cv-03720-WHP. (mro) |
| Filing 23 NOTICE OF APPEARANCE by Brigid Morris on behalf of Taro Pharmaceutical Industries Ltd., Taro Pharmaceuticals U.S.A., Inc.. (Morris, Brigid) |
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Filing 22
SCHEDULING ORDER: Counsel having appeared for a conference on April 1, 2016, the following schedule is established on consent: Parties' Opening Claim Construction Briefs and any expert declarations re: claim construction and all intrinsic and extrinsic evidence relied upon in the Parties' Opening Claim Construction Briefs: 4/22/2016. Final Joint Pretrial Order submission: 3/17/2017. Deadline to Amend Pleadings: 8/12/2016. Fact Discovery closes: 9/23/2016. Expert Discovery closes: 2/10/2017. Claim Construction Hearing set for 7/8/2016 at 11:30 AM before Judge William H. Pauley III. Final Pretrial Conference set for 3/24/2017 at 11:00 AM before Judge William H. Pauley III. (Signed by Judge William H. Pauley, III on 4/1/2016) (mro)
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| Set/Reset Deadlines: Brief due by 4/22/2016. Pretrial Order due by 3/17/2017. (mro) |
| Filing 21 JOINT CLAIM CONSTRUCTION STATEMENT. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC. (Attachments: #1 Exhibit A (Joint Disputed Claim Terms Chart))(Coyle, Steven) |
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Filing 20
SCHEDULING ORDER: The joint conference and initial pretrial conference scheduled for March 24, 2016 is adjourned to April 1, 2016 at 12:00 p.m. Initial Conference set for 4/1/2016 at 12:00 PM before Judge William H. Pauley III. Status Conference set for 4/1/2016 at 12:00 PM before Judge William H. Pauley III. (Signed by Judge William H. Pauley, III on 3/9/2016) (cf)
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Filing 19
SCHEDULING ORDER: A joint status conference and initial pretrial conference is scheduled for March 24, 2016 at 10:00 a.m. So ordered. (Initial Conference set for 3/24/2016 at 10:00 AM before Judge William H. Pauley III. Status Conference set for 3/24/2016 at 10:00 AM before Judge William H. Pauley III). (Signed by Judge William H. Pauley, III on 3/4/2016) (rjm)
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| Filing 18 ANSWER to #15 Counterclaim. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC.(Coyle, Steven) |
| Filing 17 RULE 26(f) DISCOVERY PLAN REPORT.Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC.(Stuart, Tara) |
| Filing 16 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent Taro Pharmaceutical Industries, Ltd. for Taro Pharmaceuticals U.S.A., Inc.; Other Affiliate Sun Pharmaceutical Industries Ltd. for Taro Pharmaceutical Industries Ltd.. Document filed by Taro Pharmaceutical Industries Ltd., Taro Pharmaceuticals U.S.A., Inc..(Robinson, Brian) |
| Filing 15 ANSWER to #1 Complaint,., COUNTERCLAIM against Merz North America, Inc., Merz Pharmaceuticals, LLC. Document filed by Taro Pharmaceutical Industries Ltd., Taro Pharmaceuticals U.S.A., Inc..(Robinson, Brian) |
| Filing 14 NOTICE OF APPEARANCE by Brian Jeffrey Robinson on behalf of Taro Pharmaceutical Industries Ltd., Taro Pharmaceuticals U.S.A., Inc.. (Robinson, Brian) |
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Filing 13
ORDER FOR ADMISSION PRO HAC VICE granting #12 Motion for Tara Christina Stuart to Appear Pro Hac Vice. (Signed by Judge William H. Pauley, III on 1/15/2016) (mro)
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| Filing 12 MOTION for Tara Christina Stuart to Appear Pro Hac Vice . Filing fee $ 200.00, receipt number 0208-11821377. Motion and supporting papers to be reviewed by Clerk's Office staff. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC. (Attachments: #1 Exhibit 1 - Certificate of Good Standing for Attorney Tara Stuart, #2 Text of Proposed Order)(Stuart, Tara) |
| NOTICE OF CASE ASSIGNMENT to Judge William H. Pauley, III. Judge Unassigned is no longer assigned to the case. (wb) |
| >>>NOTICE REGARDING PRO HAC VICE MOTION. Regarding Document No. #12 MOTION for Tara Christina Stuart to Appear Pro Hac Vice . Filing fee $ 200.00, receipt number 0208-11821377. Motion and supporting papers to be reviewed by Clerk's Office staff.. The document has been reviewed and there are no deficiencies. (bcu) |
| CASE ACCEPTED AS RELATED. Create association to 1:15-cv-03720-WHP. Notice of Assignment to follow. (wb) |
| Magistrate Judge Sarah Netburn is so designated. (wb) |
| Filing 11 AO 120 FORM PATENT - CASE OPENING - SUBMITTED. In compliance with the provisions of 35 U.S.C. 290, the Director of the U.S. Patent and Trademark Office is hereby advised that a court action has been filed on the following patent(s) in the U.S. District Court Southern District of New York. Director of the U.S. Patent and Trademark Office electronically notified via Notice of Electronic Filing (NEF). (moh) |
| Filing 10 ELECTRONIC SUMMONS ISSUED as to Taro Pharmaceuticals U.S.A., Inc.. (moh) |
| Filing 9 ELECTRONIC SUMMONS ISSUED as to Taro Pharmaceutical Industries Ltd.. (moh) |
| Filing 8 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent Merz Incorporated, Corporate Parent Merz Pharmaceuticals GmbH, Corporate Parent Merz GmbH & Co. KGaA., Corporate Parent Merz Pharma GmbH & Co. KGaA for Merz North America, Inc.. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC.(Coyle, Steven) |
| Filing 7 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent Merz Incorporated, Corporate Parent Merz Pharmaceuticals GmbH, Corporate Parent Merz GmbH & Co. KGaA., Corporate Parent Merz Pharma GmbH & Co. KGaA for Merz Pharmaceuticals, LLC. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC.(Coyle, Steven) |
| CASE OPENING INITIAL ASSIGNMENT NOTICE: The above-entitled action is assigned to Judge Unassigned. (moh) |
| ***NOTICE TO ATTORNEY REGARDING CASE OPENING STATISTICAL ERROR CORRECTION: Notice to attorney Steven M. Coyle. The following case opening statistical information was erroneously selected/entered: Fee Status code due (due). The following correction(s) have been made to your case entry: the Fee Status code has been modified to pd (paid). (moh) |
| CASE REFERRED TO Judge William H. Pauley as possibly related to 1:15-cv-3720. (moh) |
| Case Eligible for Patent Pilot Program. (moh) |
| Case Designated ECF. (moh) |
| Filing 6 AO 120 FORM PATENT - NOTICE OF SUBMISSION BY ATTORNEY. AO 120 Form Patent/Trademark for case opening submitted to court for review.(Coyle, Steven) |
| Filing 5 REQUEST FOR ISSUANCE OF SUMMONS as to Taro Pharmaceutical Industries Ltd., re: #1 Complaint,. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC. (Coyle, Steven) |
| Filing 4 REQUEST FOR ISSUANCE OF SUMMONS as to Taro Pharmaceuticals U.S.A., Inc., re: #1 Complaint,. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC. (Coyle, Steven) |
| Filing 3 STATEMENT OF RELATEDNESS re: that this action be filed as related to 1:15-cv-03720-WHP. Document filed by Merz North America, Inc., Merz Pharmaceuticals, LLC.(Coyle, Steven) |
| Filing 2 CIVIL COVER SHEET filed. (Coyle, Steven) |
| Filing 1 COMPLAINT against Taro Pharmaceutical Industries Ltd., Taro Pharmaceuticals U.S.A., Inc.. (Filing Fee $ 400.00, Receipt Number 0208-11789354)Document filed by Merz Pharmaceuticals, LLC, Merz North America, Inc.. (Attachments: #1 Exhibit A - Part 1, #2 Exhibit A - Part 2, #3 Exhibit A - Part 3)(Coyle, Steven) |
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