UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

In re NEBIVOLOL ('040) PATENT 

LITIGATION 

Civil Action No. 1:12-cv-5026 (EEB) (JC) 

JOINT STIPULATION OF PLAINTIFFS AND ACTAVIS 

Plaintiffs Forest Laboratories, Inc. and Forest Laboratories Holdings, Ltd. (collectively, 

“Plaintiffs”) and Defendants Watson Laboratories, Inc. (NV), Watson Laboratories, Inc. (DE), 

Watson Laboratories, Inc. (NY), Watson Laboratories, Inc. (CT), Watson Pharma, Inc., and 

Actavis, Inc., (collectively, “Actavis”) hereby submit and respectfully request that the Court 

enter the attached stipulation and order dismissing, without prejudice, all claims, defenses, and 

counterclaims as between Plaintiffs and Actavis in this case. See Stipulation and Order, attached 

as Exhibit A. Exhibit A has also been submitted in WordPerfect-compatible format to the 

Court’s dedicated e-mail address for proposed orders as required by the Court’s Case 

Management Procedures. 

 

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Dated: November 7, 2013 

 

Respectfully submitted, 

/s/ Steven J. Horowitz 

David T. Pritikin 

Steven J. Horowitz 

SIDLEY AUSTIN LLP 

1 S. Dearborn Street 

Chicago, Illinois 60603 

(312) 853-7000 

(312) 853-7036 (Fax) 

dpritikin@sidley.com 

lfriedlieb@sidley.com 

shorowitz@sidley.com 

Todd L. Krause 

SIDLEY AUSTIN LLP 

787 Seventh Avenue 

New York, New York 10019 

(212) 839-5300 

(212) 839-5599 (Fax) 

tkrause@sidley.com 

Attorneys for Plaintiffs Forest Laboratories, 

Inc. and Forest Laboratories Holdings, Ltd. 

Dated: November 7, 2013 

 

Respectfully submitted, 

/s/ Jeremy Edwards 

Steven A. Maddox 

Jeremy Edwards 

KNOBBE MARTENS 

1717 Pennsylvania Avenue, N.W. 

Suite 900 

Washington, DC 20006 

steve.maddox@knobbe.com 

jeremy.edwards@knobbe.com 

Frederick Christopher Laney 

Ashley Elizabeth LaValley 

NIRO, HALLER & NIRO 

181 W. Madison 

Suite 6400 

Chicago, IL 60602 

laney@nshn.com 

alavalley@nshn.com 

Attorneys for Defendants Watson Laboratories 

Inc. (NV), Watson Laboratories Inc. (DE), 

Watson Laboratories Inc. (NY), Watson 

Laboratories Inc. (CT), Actavis Pharma, Inc., 

and Actavis, Inc.

 

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EXHIBIT A

Stipulation And Order

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UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

In re Nebivolol ('040) Patent Litigation C.A. No. 12-5026 (EEB) (JC) 

STIPULATION AND ORDER

 

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The Court, upon the consent and request of Plaintiffs Forest Laboratories, Inc. and 

Forest Laboratories Holdings, Ltd. (collectively, "Forest" or "Plaintiffs") and Defendants Watson 

Laboratories, Inc. (NV), Watson Laboratories, Inc. (DE), Watson Laboratories, Inc. (NY), 

Watson Laboratories, Inc. (CT), Watson Pharma, Inc., and Actavis, Inc., (collectively, 

“Actavis”), hereby acknowledges the following Stipulation and issues the following Order. 

STIPULATION

1. This Court has subject matter jurisdiction over this patent infringement 

action (the "Action") and personal jurisdiction over Plaintiffs and Actavis. Venue is proper in 

this Court as to Plaintiffs and Actavis. 

2. In this Action, Plaintiffs have charged Actavis with infringement of 

United States Patent No. 6,545,040 ("the '040 Patent") in connection with Actavis's submission 

of Abbreviated New Drug Application ("ANDA") No. 203683 directed to generic tablets 

containing 2.5 milligrams, 5 milligrams, 10 milligrams, or 20 milligrams of nebivolol 

hydrochloride per tablet to the U.S. Food and Drug Administration ("FDA"). 

3. In response to Plaintiffs' charges of patent infringement, Actavis has 

alleged certain defenses and counterclaims, including that the '040 Patent is invalid, 

unenforceable and/or not infringed by the generic tablet products containing 2.5 milligrams, 5 

milligrams, 10 milligrams, or 20 milligrams of nebivolol hydrochloride that are the subject of 

ANDA No. 203683. No decision has been obtained by either party from this Court regarding 

these charges of infringement or these defenses and counterclaims. 

4. To date, Actavis has not rebutted the statutory presumption that the '040 

Patent is valid and enforceable in this Action. This admission is without prejudice to Actavis's 

defenses and counterclaims that the '040 Patent is invalid, unenforceable and/or not infringed. 

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5. Actavis admits that the submission of ANDA No. 203683 to the FDA for 

the purpose of obtaining regulatory approval to engage in the commercial manufacture, use 

and/or sale of generic tablets containing 2.5 milligrams, 5 milligrams, 10 milligrams, or 20 

milligrams of nebivolol hydrochloride per tablet within the United States before the expiration of 

the '040 Patent was a technical act of infringement of that patent under 35 U.S.C. § 271(e)(2)(A). 

This admission is without prejudice to Actavis's defenses and counterclaims that the '040 Patent 

is invalid, unenforceable and/or that the product described by ANDA No. 203683 does not 

infringe that patent. 

6. Both parties agree that all other claims and defenses set forth in their 

pleadings against each other, including the allegations and averments contained therein, should 

be dismissed, without prejudice. 

ORDER

Accordingly, pursuant to the above Stipulation, and upon the consent and request 

of Plaintiffs and Actavis, IT IS HEREBY ORDERED, ADJUDGED AND DECREED 

THAT: 

1. The filing of ANDA No. 203683 was a technical act of infringement of the 

'040 Patent under 35 U.S.C. § 271(e)(2)(A). No decision of the Court has been obtained by 

either party regarding the presumptive validity or enforceability of the '040 Patent and/or 

whether the product described by ANDA No. 203683 infringes that patent. 

2. All other claims and defenses set forth in Plaintiffs' and Actavis's 

pleadings against each other, including the allegations and averments contained therein, are 

hereby dismissed, without prejudice. 

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3. Actavis, its officers, agents, servants, employees and attorneys, and those 

persons in active concert or participation with them who receive actual notice of this Order by 

personal service or otherwise, are hereby enjoined from manufacturing, using, offering to sell or 

selling within the United States, or importing into the United States, the generic tablet products 

containing 2.5 milligrams, 5 milligrams, 10 milligrams, or 20 milligrams of nebivolol 

hydrochloride per tablet that are the subject of ANDA No. 203683 during the life of the '040 

Patent, including any extensions and pediatric exclusivities, absent a license agreement or other 

authorization by Plaintiffs, unless all of the asserted claims of the '040 Patent are found invalid or 

unenforceable by a court decision from which no appeal has been or can be taken, other than a 

petition for a writ of certiorari to the U.S. Supreme Court. 

4. Plaintiffs and Actavis each expressly waive any right to appeal or 

otherwise move for relief from this Stipulation And Order. 

5. This Court retains jurisdiction over Plaintiffs and Actavis for purposes of 

enforcing this Stipulation And Order. 

6. This Stipulation And Order shall finally resolve this Action between 

Plaintiffs and Actavis. 

7. The Clerk of the Court is directed to enter this Stipulation And Order 

forthwith. 

SO ORDERED: 

This ______ day of _____________, 2013 

HONORABLE ELAINE E. BUCKLO 

UNITED STATES DISTRICT JUDGE 

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