IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

EASTERN DIVISION 

ROXANE LABORATORIES, INC., 

 Plaintiff, 

vs. Civil Action 2:12-cv-312 

 Judge Watson 

 Magistrate Judge King 

ABBOTT LABORATORIES, et al., 

 Defendants. 

ABBVIE, INC., 

 Plaintiff, 

 Civil Action 2:13-cv-645 

 vs. Judge Watson 

 Magistrate Judge King 

ROXANE LABORATORIES, INC., 

 Defendant. 

ABBVIE, INC., 

 Plaintiff, 

 Civil Action 2:13-cv-708 

 vs. Judge Watson 

 Magistrate Judge King 

ROXANE LABORATORIES, INC., 

 Defendant. 

Memorandum 

 This matter is before the Court for consideration of AbbVie Inc. 

(“AbbVie”) and Abbott Laboratories’ (“Abbott”) Motion to Consolidate 

Related Actions (“Motion to Consolidate”), No. 2:12-cv-312 (S.D. 

Ohio), Doc. No. 121; No. 2:13-cv-645 (S.D. Ohio), Doc. No. 70; No. 

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2:13-cv-708 (S.D. Ohio), Doc. No. 7, seeking to consolidate Case No. 

2:13-cv-708 with two previously consolidated cases, Nos. 2:12-cv-312 

and 2:12-cv-645 (the “Consolidated Cases”). Roxane Laboratories, Inc. 

(“Roxane”), opposes the Motion to Consolidate, Roxane Laboratories, 

Inc.’s Opposition to AbbVie Inc’s and Abbott Laboratories’ Motion to 

Consolidate Related Cases (“Roxane’s Response”), Doc. No. 122. Abbott 

and AbbVie have filed a reply, Reply in Support of 

Defendants’/Counter-Plaintiffs’ Motion to Consolidate Related Actions 

(“Abbott and AbbVie’s Reply”), Doc. No. 126. For the reasons that 

follow, the Motion to Consolidate is DENIED. 

I. Background 

The Court has previously set forth the background of the 

Consolidated Cases: 

[AbbVie] is the holder of approved New Drug Application 

(“NDA”) No. 22-417 for ritonavir tablets, 100 mg, which is 

marketed and sold under the trade name Norvir®. No. 2:12-

cv-312 (S.D. Ohio), Doc. No. 58, ¶ 13. [AbbVie] also holds 

the regulatory exclusivities associated with that NDA. Id. 

[Roxane] has submitted Abbreviated New Drug Application No. 

202573 (“ANDA 202573”) to the United States Food and Drug 

Administration in order “to obtain regulatory approval to 

engage in the commercial manufacture, use, or sale of 

generic oral ritonavir tablets, 100 mg,” which are the 

“bioequivalent” to Norvir®, “before the expiration of the 

Listed Patents.” No. 2:12-cv-312 (S.D. Ohio), Amended 

Complaint, Doc. No. 56, ¶ 16. 

Roxane filed suit in this Court on April 10, 2012 at 4:25 

p.m., seeking a declaration of invalidity and noninfringement in connection with Patent Nos. 7,148,359 (the 

“̔359 patent”) and 7,364,752 (the “̔752 patent”) held by 

[Abbott and AbbVie] and relating to the drug Norvir®. See 

id. at ¶¶ 1, 11-13. At 11:51 pm on that same day, Abbott 

filed suit in the United States District Court for the 

District of Delaware, alleging that Roxane’s ANDA infringed 

Abbott’s ‘359 patent, ‘752 patent, and Patent Nos. 

5,648,497 (the “̔497 patent”), 6,037,157 (the “̔157 

patent”), and 6,703,403 B2 (the “̔403 patent”), all related 

to the drug Norvir®. 2:13-cv-645 (S.D. Ohio), Complaint, 

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Doc. No. 1, ¶ 3; 2:13-cv-645 (S.D. Ohio), Amended 

Complaint, Doc. No. 8, ¶ 3. That action was transferred to 

this Court on June 18, 2013. Id., Order, Doc. No. 65. 

. . . 

On July 23, 2013, the parties’ July 9, 2013 joint motion to 

consolidate the Ohio action and the transferred action was 

granted. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 120; No. 

2:13-cv-645 (S.D. Ohio), Doc. No. 69. 

No. 2:12-cv-312 (S.D. Ohio), Opinion and Order, Doc. No. 128, pp. 2-5. 

AbbVie was issued patent Nos. 8,268,349 B2 (the “’349 patent”) 

and 8,399,015 B2 (the “’015 patent”) on September 18, 2012 and March 

19, 2013, respectively. No. 2:13-cv-708 (S.D. Ohio), Complaint (“No. 

13-708 Complaint”), ¶¶ 14-15; No. 2:13-cv-708 (S.D. Ohio), Answer and 

Counterclaims of Defendant Roxane Laboratories, Inc. (“No. 13-708

Answer”), Doc. No. 8, at ¶¶ 14-15. The ’349 and ’015 patents are both 

listed in the Approved Drug Products with Therapeutic Equivalence 

Evaluations (“Orange Book”) for NDA No. 22-417 and relate to the drug 

Norvir®. No. 13-708 Answer, ¶¶ 14-15. 

Roxane subsequently amended ANDA 202573, seeking approval to 

market generic ritonavir tablets prior to, inter alia, the expiration 

of the ’349 and ’015 patents. Id. at ¶ 13. On July 18, 2013, AbbVie 

filed suit in this Court, No. 2:13-cv-708 (S.D. Ohio) (“AbbVie II”), 

alleging that Roxane’s ANDA infringed AbbVie’s ’349 and ’015 patents. 

No. 13-708 Complaint, ¶¶ 3-4. Abbott and AbbVie now seek to 

consolidate AbbVie II with the Consolidated Cases. 

II. Discussion 

Rule 42 of the Federal Rules of Civil Procedure authorizes the 

consolidation of cases that “involve a common question of law or 

fact.” Fed. R. Civ. P. 42(a)(2). A district court enjoys broad 

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discretion in making that decisions. Cantrell v. GAF Corp., 999 F.2d 

1007, 1011 (6th Cir. 1993) (citing Stemler v. Burke, 344 F.2d 393, 396 

(6th Cir. 1965)); Advey v. Celotex Corp., 962 F.2d 1177, 1180 (6th 

Cir. 1992)). “The underlying objective [of consolidation] is to 

administer the court’s business with expedition and economy while 

providing justice to the parties.” Advey, 962 F.2d at 1181 (quotation 

marks and citations omitted). 

Roxane’s arguments to the contrary notwithstanding, see Roxane’s 

Response, pp. 6-9, the Court finds that the cases presently before the 

Court involve a common question of law or fact. First, the Court 

notes that the parties in the cases are identical. Second, many of 

the issues pertaining to infringement and invalidity arise in all the 

cases. All of Abbott and AbbVie’s claims and counterclaims relate to 

Roxane’s ANDA 202573 and will therefore involve issues of infringement 

of the same generic ritonavir product. Similarly, all the patents at 

issue relate to Norvir®, and both actions involve patents directed to 

aspects of the ritonavir pharmaceutical formulations. Because of 

these similarities, it is also likely that there will be overlap 

between the evidence used in both cases. For example, at least one 

reference cited by Roxane concerning the alleged invalidity of the 

’359 and ’752 patents is also cited as support for the alleged 

invalidity of the ’349 and ’015 patents. See Abbott and AbbVie’s 

Reply, Exhibit E, at pp. 14-20; Exhibit F, at pp. 3-4, 7-8. Although 

all parties acknowledge that the “precise technical nature” of the 

patents in AbbVie II is different from that of the patents at issue in 

the Consolidated Cases, there is sufficient overlap between the 

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patents and infringement claims to find a common question of law and 

fact. 

This threshold determination does not, however, end the Court’s 

inquiry. Cantrell, 999 F.2d at 1011-12; Banacki v. OneWest Bank, FSB, 

276 F.R.D. 567, 571 (E.D. Mich. 2011) (“Whether cases present a common 

question of law or fact is only a threshold requirement; once a common 

question has been established, the decision to consolidate rests in 

the sound discretion of the district court.”) (citations omitted). 

The Court must also consider: 

“Whether the specific risks of prejudice and possible 

confusion [are] overborne by the risk of inconsistent 

adjudications of common factual and legal issues, the 

burden on parties, witnesses and available judicial 

resources posed by multiple lawsuits, the length of time 

required to conclude multiple suits as against a single 

one, and the relative expense to all concerned of the 

single-trial, multiple-trial alternatives.” 

Cantrell, 999 F.2d at 1011 (quoting Hendrix v. Raybestos-Manhattan, 

Inc., 776 F.2d 1492, 1495 (11th Cir. 1985)). The United States Court 

of Appeals for the Sixth Circuit has advised that “the decision to 

consolidate is one that must be made thoughtfully with specific 

reference to the factors identified above. Care must be taken that 

consolidation does not result in unavoidable prejudice or unfair 

advantage.” Id. If the conservation of judicial resources achieved 

through consolidation is “slight, the risk of prejudice to a party 

must be viewed with even greater scrutiny.” Id. 

 In the cases presently before the Court, Roxane argues that 

consolidation would not promote judicial economy and that it would be 

prejudiced by consolidation because “there is a substantial difference 

in trial readiness between [AbbVie II and the Consolidated Cases].” 

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Roxane’s Response, pp. 2, 5-6. Roxane further argues that 

consolidation will significantly impact the case schedule in the 

Consolidated Cases and that Roxane “will be unavoidably prejudiced 

because consolidation will delay resolution of all the actions beyond 

30 months from the filing of [Case No. 12-312].” Id. at pp. 6, 9-10. 

Roxane’s conclusory argument in this regard fails to explain precisely 

how or why Roxane will be prejudiced by a delay in the Consolidated 

Cases. Nevertheless, however, the Court is not convinced that 

consolidation would best serve the interests of justice or promote the 

objective of consolidation. 

 Abbott and AbbVie argue that consolidation would promote judicial 

economy and the interest of justice because consolidation will prevent 

“duplicative, highly overlapping discovery” in the two cases. See 

Motion to Consolidate, p. 6 (“Consolidation is warranted here for at 

least the purpose of simplifying and streamlining the discovery 

process, in light of the likelihood that AbbVie would be subjected to 

duplicative, highly overlapping discovery if the cases were not 

consolidated.”). See also id. at pp. 6-9. However, AbbVie II and the 

Consolidated Cases are pending before the same judicial officers. The 

Court can therefore coordinate discovery and minimize the risk and 

burden of duplicative discovery even without consolidation. See e.g., 

LSP Technologies, Inc. v. Metal Imp. Co. LLC, No. 2:10-cv-526, 2010 WL 

3447834, at *2 (S.D. Ohio Aug. 30, 2010) (noting that “the existence 

of overlapping counterclaims does not weigh heavily in favor of 

consolidation” because the parties could coordinate discovery to 

permit discovery conducted in one case to be used in the other); 

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Beverlly Jewerlly Co., Ltd. V. Tacori Enters., No. 1:06cv1967, 2006 WL 

3304218, at *2 n.1 (N.D. Ohio Nov. 13, 2006) (“[T]o the extent that 

[the parties] will be engaging in the same discovery for their 

respective cases, those discovery efforts can be coordinated by the 

parties whether or not those actions are formally consolidated.”). 

The fact that both cases are pending before the same judicial officers 

also minimizes the risk of inconsistent results and lessens the burden 

on the Court. See LSP Technologies, Inc., 2010 WL 3447834 at *2 

(declining to consolidate cases and finding the risk of inconsistent 

claim constructions to be minimal where the same District Judge 

presided over both cases). Finally, AbbVie II and the Consolidated 

Cases are at significantly different stages of litigation. The 

Consolidated Cases were filed in April 2012, i.e., fifteen months 

prior to the filing of AbbVie II, and the parties have engaged in 

extensive discovery in the Consolidated Cases. See e.g., Abbott and 

AbbVie’s Reply, p. 3 (noting that AbbVie has already produced over 4 

million pages of documents). Many of the original deadlines set in 

Case No. 12-312 have already been extended by approximately one year, 

see No. 12-312 (S.D. Ohio), Preliminary Pretrial Order, Doc. No. 29; 

No. 12-312 (S.D. Ohio), Order, Doc. No. 124, and consolidation would 

require yet additional and significant extensions to the schedule in 

the Consolidated Cases. In an effort to achieve the expeditious 

resolution of the Consolidated Cases and minimize delay to the 

parties, the Court is at present unwilling to further extend that 

schedule for purposes of consolidation. Should the schedule in the 

Consolidated Cases change, or should the schedule yet to be set in 

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AbbVie II, militate in favor of formal consolidation of the cases, the 

Court will of course entertain a request to revisit this issue at that 

time. 

 Based on the foregoing, the Court concludes that its discretion 

is better exercised at this time by denying consolidation. Abbott and 

AbbVie’s Motion to Consolidate, No. 2:12-cv-312 (S.D. Ohio), Doc. No. 

121; No. 2:13-cv-645 (S.D. Ohio), Doc. No. 70; No. 2:13-cv-708 (S.D. 

Ohio), Doc. No. 7, is therefore DENIED. The Court notes that a 

preliminary pretrial conference is scheduled in AbbVie II for October 

2, 2013 at 1:45 p.m. The parties must be prepared to discuss the 

coordination of discovery between AbbVie II and the Consolidated Cases

at that time. 

September 16, 2013 s/ Norah McCann King 

 Norah McCann King 

 United States Magistrate Judge 

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