UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

CUMBERLAND PHARMACEUTICALS INC., )

)

Plaintiff, )

) No. 1:12-cv-03846

v. )

) Judge Rebecca Pallmeyer

MYLAN INSTITUTIONAL LLC, AND )

MYLAN INC., ) Magistrate Judge Maria Valdez

)

Defendants. )

CUMBERLAND PHARMACEUTICALS INC.’S OPPOSITION TO DEFENDANTS’

MOTION TO STRIKE CUMBERLAND PHARMACEUTICALS INC.’S FINAL

INFRINGEMENT CONTENTIONS

Plaintiff Cumberland Pharmaceuticals Inc. (“Cumberland”) opposes Defendants Mylan 

Institutional LLC and Mylan Inc.’s (“Mylan”) Motion to Strike Cumberland’s Final Infringement 

Contentions (“Motion to Strike”) but consents to Mylan’s request to withdraw its Summary 

Judgment motion. 

Mylan’s Motion to Strike should not have been filed. Last week, Cumberland asked 

Mylan to withdraw its Summary Judgment motion (Ex. 1) in light of Cumberland’s service of its 

Final Infringement Contentions that included, at Mylan’s request (Ex. 2), contentions on 

Cumberland’s United States Patent No. 8,399,445, recently added by consent in this case. 

Instead of withdrawing its Summary Judgment motion or responding to Cumberland, Mylan 

filed the instant Motion to Strike, with its alternative motion to withdraw its Summary Judgment 

motion. However, Mylan’s motion fundamentally misapprehends the Federal Rules of Civil 

Procedure, this Court’s Scheduling Order, and the Local Patent Rules. Accordingly, the Motion 

to Strike should be denied. 

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Mylan acknowledges the sufficiency of Cumberland’s final contentions. (Motion to 

Strike at 4.) Mylan also acknowledges that its Summary Judgment motion is improper; indeed, 

Mylan asks the Court to withdraw its pending Summary Judgment motion of non-infringement 

should the Court deny its Motion to Strike.1 While admitting that the substance of Cumberland’s 

final contentions are proper, Mylan bases its Motion to Strike on the timing of Cumberland’s 

final contentions. Mylan alleges that Cumberland’s “conduct is a violation of . . . the Court’s 

scheduling order” (Motion to Strike at 1), yet fails to specify any part of the Court’s scheduling 

order that Cumberland violated. Cumberland served its Final Infringement Contentions on the 

date they were due, May 8, 2013. (D.I. 125.) Serving contentions when they were due, rather 

than some earlier date, is not a violation. Mylan did not, and cannot, cite any support for such a 

proposition.

Cumberland’s Final Infringement Contentions, which accuse the same infringing product 

(Mylan’s ANDA No. 203624) identified in Cumberland’s complaint and Initial Infringement 

Contentions, also faithfully comply with the requirements of the Local Patent Rules (“Rules”). 

Mylan’s reliance on the preamble of the Rules, generally requiring provision of “the particulars 

behind allegations of infringement, non-infringement, and invalidity at an early date,” ignores 

the full text of the Rules, which implement a two-step process and due dates for disclosure of 

contentions: Initial Infringement Contentions (LPR 2.2) followed by Final Infringement 

 1 Mylan’s request (Motion to Strike at 5-6) that the Court withdraw its Summary Judgment 

motion highlights the impropriety of that motion to address what was, at most, a discovery 

dispute. Instead of basing its Summary Judgment motion on its proposed product and the 

asserted claim limitations, Mylan improperly argued that Cumberland’s allegedly deficient 

contentions were a basis for summary judgment of non-infringement. However, as Mylan now 

concedes (Motion at n. 2), under controlling Federal Circuit authority cited in Cumberland’s 

Opposition to Mylan’s Summary Judgment motion, claim construction is a predicate to a ruling 

on infringement, and therefore, Mylan never was and is not entitled to summary judgment of 

non-infringement.

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Contentions (LPR 3.1). Notably, the section of the Preamble in the Local Patent Rules Mylan 

does not cite, states:

The initial disclosures required by the Rules are not intended to confine a party to 

the contentions it makes at the outset of the case. It is not unusual for a party in a 

patent case to learn additional grounds for claims of infringement, noninfringement, and invalidity as the case progresses. 

LPR at 1.

Mylan’s argument that Cumberland’s Final Infringement Contentions should be stricken 

because they are too detailed, i.e., “contain[] multiple new arguments and citations” (Motion at 

2, 4-5), contradicts controlling authority in this district which holds that: 

The Local Patent Rules of the Northern District of Illinois further exemplify the 

non-binding nature of the contentions of parties by providing for the disclosure 

both of “initial infringement contentions,” L.P.R. 2.2, and “final infringement 

contentions,” L.P.R. 3.2 . . . . [and] provi[de] for evolving contentions over the 

span of the suit. 

Intellect Wireless, Inc. v. T-Mobile USA, Inc., 735 F. Supp. 2d 928, 937 n.7 (N.D. Ill. 2010).

The cases Mylan cites are from other districts with different local court rules and factual 

circumstances. O2 Micro International, Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 

1364 (Fed. Cir. 2006), and Connectel LLC v. Cisco Systems, Inc., 391 F. Supp. 2d 526 (E.D. Tex. 

2005), Motion at 3, involved distinctly different local patent rules. 

Mylan’s complaints of prejudice or surprise, e.g., as to Cumberland asserting 

contributory infringement, Motion at 4, due to the timing of Cumberland’s service of its 

contentions rings hollow. Mylan expressly agreed to the case management schedule and to 

Cumberland adding contentions on the ’445 patent which necessarily include contributory 

infringement because the asserted claims are method claims.

The frivolous nature of Mylan’s motion is underscored by Mylan’s own actions. Mylan 

filed its Final Invalidity and Unenforceability Contentions on the very same due date as 

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Cumberland, the date specified in the Court’s Scheduling order, not earlier. Moreover, Mylan’s 

Final Invalidity and Unenforceability Contentions contain new arguments and cited documents 

not disclosed in its Initial Invalidity and Unenforceability Contentions. For example, Mylan’s 

final invalidity contentions cite 24 references as potential invalidity bases, eight of which did not 

appear in its initial contentions, (Mylan’s Final Invalidity Contentions at 3-5), and an entirely 

new invalidity argument that the asserted ’356 patent claims are invalid under 35 U.S.C. § 112, ¶ 

4 (id. at 23-24).2

 

Mylan’s Motion to Strike, in essence, objects to rules mandated by controlling legal 

authority, this Court’s Scheduling Order, and the Local Patent Rules and that Mylan itself 

embraced. Accordingly, Mylan’s motion to strike should be denied, and its motion for costs and 

fees denied. Indeed, if any party should be awarded fees and costs, Cumberland respectfully 

submits that it is Cumberland who should be awarded its fees and costs for addressing Mylan’s 

repeated frivolous motions relating to the infringement contentions, the instant motion, Mylan’s

September 4, 2012, Motion to Dismiss, and Mylan’s October 1, 2012, Summary Judgment 

motion.

For the reasons set forth above, Cumberland respectfully requests that the Court deny 

Mylan’s Motion to Strike Cumberland’s Final Infringement Contentions, grant Mylan leave to 

withdraw its Motion for Summary Judgment, and deny its request for fees and costs. 

 2 Because of the size of Mylan’s initial and final contentions, Cumberland has not attached them 

to this Opposition but will make them available to the Court upon request or for an in camera 

review.

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Dated: May 29, 2013 Respectfully submitted, 

/s/Claudia M. Rustad 

By: Laura P. Masurovsky pro hac vice

Mark J. Feldstein pro hac vice

Danielle A. Duszczyszyn pro hac vice

FINNEGAN, HENDERSON, 

 FARABOW, GARRETT & DUNNER LLP

901 New York Avenue, NW 

Washington, DC 20001-4413 

Tel: (202) 408-4000

Fax: (202) 408-4400

laura.masurovksy@finnegan.com

mark.feldstein@finnegan.com

danielle.duszczyszyn@finnegan.com

Lynn H. Murray 

Claudia M. Rustad

Anna S. Knight 

GRIPPO & ELDEN

111 South Wacker Drive

Chicago, IL 60606

Tel: (312) 704-7766

Fax: (312) 558-1195

lmurray@grippoelden.com

cmrustad@grippoelden.com

Attorneys for Cumberland Pharmaceuticals Inc.

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CERTIFICATE OF SERVICE

The undersigned certifies that on May 29, 2013, a true and correct copy of 

CUMBERLAND PHARMACEUTICALS INC.’S OPPOSITION TO DEFENDANTS’

MOTION TO STRIKE CUMBERLAND PHARMACEUTICALS INC.’S FINAL 

INFRINGEMENT CONTENTIONS was filed with the Clerk of the Court using the Electronic 

Case Filing (ECF) system, which will send notification of such filing via electronic mail to the 

following counsel of record:

Nicole W. Stafford

Robert A. Delafield II

WILSON SONSINI GOODRICH & ROSATI, PC

900 South Capital of Texas Highway, Las Cimas IV, Fifth Floor

Austin, Texas 78746-5546

Tel: (512) 338-5400

Fax: (512) 338-5499

Stuart A. Williams

WILSON SONSINI GOODRICH & ROSATI, PC

1301 Avenue of the Americas, 40th Floor

New York, NY 10019

Tel: (212) 497-7705

Fax: (212) 999-5899

Nancy L. Zhang

WILSON SONSINI GOODRICH & ROSATI, PC

650 Page Mill Road

Palo Alto, CA 94304-1050

Tel: (650) 849-3073

Fax: (650) 493-6811

Wendy L. Devine

Elham F. Steiner

WILSON SONSINI GOODRICH & ROSATI, PC

12235 El Camino Real, Suite 200

San Diego, CA 92130

Tel: (858) 350-2321

Fax: (858) 350-2399

Tung-On Kong

WILSON SONSINI GOODRICH & ROSATI, PC

One Market Plaza, Spear Tower, Suite 3300

San Francisco, CA 94105

Tel: (415) 947-2000

Fax: (866) 974-7329

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Steven P. Mandell

Steven L. Baron

Elizabeth Morris

MANDELL MENKES LLC

1 North Franklin, Suite 3600

Chicago, IL 60606

Tel: (312) 251-1000

Fax: (312) 251-1010

Attorneys for Mylan Institutional LLC and Mylan Inc.

/s/ Claudia M. Rustad

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