did consider the significant capital Defendants invested in their leuprolide acetate products.
However, Defendants have not demonstrated that they would have made alternative capital
investments had they known about Plaintiffs’ suit earlier. Therefore, the Defendants have not
demonstrated that their change in economic position would not have occurred if the Plaintiffs

filed suit at an earlier date,

If. Conclusion

The Defendants have failed to bring any newly discovered evidence to the attention of the
Court; nor have the Defendants shown that the Court committed a manifest error of law.
Therefore, the Court will not reconsider its ruling barring the Defendants from presenting a

laches defense. The Defendants’ Motion for Reconsideration is DENIED.

Enter:

cud

David H. Coar

United States District Judge

Dated: November 13, 2003

4.


ultimate burden of persuasion of the affirmative defense of laches...[t]he burden of persuasion

does not shift by reason of the patentee’s six year delay.” A.C, Auckerman Co. v. R.L. Chaides

Const. Co., 960 F.2d 1020, 1038-39 (Fed. Cir. 1992). Defendants argue that their failure to
undertake a design-around of the ‘542 patent once suit was filed should not have supported a
finding of no economic prejudice. However, the Court considered the evidence on the record at
the time of the Court’s ruling on the Parties’ cross motions for summary judgment in concluding
that Defendants’ failure to provide any evidence of an alternative scheme or plan for changing
the structure of their product in the face of infringement weighs in favor of determining that the
Defendants suffered no material economic prejudice. This lack of an alternative structure for
Defendants’ leuprolide acetate products remains a relevant factor in concluding that Defendants
are precluded from presenting a laches defense.

The Defendants also argue that the Court failed to consider Defendants’ change in
economic position in ruling that Defendants were barred, as a matter of law, from presenting a
laches defense. Again, the Defendants misconstrue the Court’s October 21, 2003 Opinion to
stand for the proposition that Defendants’ lack of knowledge of the ‘542 patent was the reason
the Court determined that Defendants are precluded from presenting a laches defense. The Court
determined that Defendants did not show material economic prejudice because Defendants failed
to show that if Plaintiffs had filed suit earlier, the Defendants’ economic position would be
different. See Gasser Chair Co. v. Infanti Chair Mfg Corp., 60 F.3d 770, 775 (Fed. Cir. 1995)
(“A change in the economic position of the infringer during the period of delay must be as a
result of the delay; the infringer must prove that the change in economic position would not have

occurred had the patentee filed suit earlier.” Id.). Contrary to Defendants’ assertion, the Court

-3-



Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge
or Magistrate Judge

Sitting Judge if Other
than Assigned Judge

David H. Coar

CASE NUMBER 01 C 7631 DATE 11/13/2003
CASE Oakwood Laboratories, et. al. vs. TAP Pharmaceutical Products, Inc., et. al.
TITLE

[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
of the motion being presented.)

(dl) #

MOTION:
Defendants’ Motion for Reconsideration [213-1]
DOCKET ENTRY:
(1) a Filed motion of [ use listing in “Motion” box above.}
(2) Oo Brief in support of motion due
(3) ao Answer brief to motion due. . Reply to answer brief due
(4) QO Ruling/Hearing on setfor at
(5) Oo Status hearing[held/continued to] [set for/re-set for] on setfor at.
(6) a Pretrial conference[held/continued to] (set for/re-set for] on setfor_ at.
(7) Oo Trial[set for/re-set for]on___at
(8) oO (Bench/Jury trial] [Hearing] held/continuedto___at__
(9) a This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OOFRCP4(m) CLocal Rule 41.1 OFRCP41(a\(1) O FRCP41(a)(2).
(10) «xf [Other docket entry)  For.the reasons set forth in the attached Memorandum Opinion and Order,

Defendants’ Motion for Reconsideration of the Court’s Decision Granting Summary Judgment Of No
Laches [213-

1] is DENIED.

Vaud ltbon

[For further detail see order attached to the original minute order,]

No notices required.

Mail AO 450 form.

No notices required, advised in open court,
Notices mailed by judge’s staff.
Notified counsel by telephone.

X_ | Docketing to mait notices.

Copy to judge/magistrate judge.

sif (te)

Document
Number
umber of notices

NOV 142008

date dockered

22

mS patty docketiyg puny initials
dace nuiled notice
courtroom ' ‘ 5
depuly’s :
initials —-——
S Date/linge received in.) 34

central Clerk's Office mailing deputy initials



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

DOCKETED
NOV 1 4 2003

OAKWOOD LABORATORIES, L.L.C.,
and UNIVERSITY OF KENTUCKY
RESEARCH FOUNDATION,

Plaintiffs,
No. 01 C 7631
vy.
HONORABLE DAVID H. COAR
TAP PHARMACEUTICAL PRODUCTS,
INC., TAP HOLDINGS, INC., TAKEDA
CHEMICAL INDUSTRIES, LTD., and
ABBOT LABORATORIES,

Defendants.

weveevrve ve eevee vr

MEMORANDUM OPINION AND ORDER
On October 21, 2003, this Court issued a Memorandum Opinion and Order on Oakwood
Laboratories, et. al. (“Plaintiffs”) and TAP Pharmaceutical Products, et. al. (“Defendants”) cross

motions for summary judgment. Oakwood Laboratories, L.L.C. v. TAP Pharmaceutical

Products, Inc., No. 01 C 7631, 2003 U.S. Dist. LEXIS 18712 (N.D. Ill. Oct. 21, 2003). Presently

at issue is this Court’s ruling on the Parties’ cross motions for summary judgment on the issue of
laches. The Court denied Defendants’ motion for partial summary judgment of laches and
equitable estoppel [124-1] , and granted Plaintiffs’ motion for partial summary judgment of no
laches or equitable estoppel defense [115-1]. Id. at *97. In their Motion for Reconsideration, the
Defendants request that the Court reconsider its ruling barring the Defendants from presenting a
laches defense. For the reasons set forth below, the Defendants’ Motion for Reconsideration is

DENIED.

-1- y Me



J. Standards for Motions for Reconsideration

Motions for reconsideration should be granted, “to correct manifest errors of law or fact
or to present newly discovered evidence.” Keene Corp. v. International Fidelity Ins. Co., 561 F.
Supp. 656, 665-66 (N.D. Ill. 1982), aff'd., 736 F.2d 388 (7th Cir. 1984). A motion for
reconsideration shall be granted only if the Court has patently misunderstood a party, has made a
decision outside the adversarial issues presented to the Court by the parties, or has made an error
not of reasoning but of apprehension. A further basis for a motion for reconsideration would be a
controlling or significant change in the law or facts since the submission of the issues to the

Court. Such problems rarely arise and the motion to reconsider should be equally rare. Bank of

Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990) (citing Above

the Belt, Inc. v. Mel Bohannan Roofing, Inc., 99 F.R.D. 99, 101 (E.D. Va. 1983)).

Il. Analysis!

The Defendants argue that the Court erroneously used Defendants’ pre-suit ignorance of
the ‘542 patent to find an absence of material prejudice as a matter of law. However,
Defendants’ argument misconstrues the basis upon which the Court determined that Defendants
are precluded from presenting a laches defense. The Court did not indicate that the Defendants’
pre-suit ignorance of the ‘$42 patent precludes a laches defense. The Court based its bar ofa
laches defense in part on the fact that Defendants have made no attempt to produce an alternative

design around their product, even in the face of possible infringement. “The defendant bears the

‘For the purposes of this Opinion, the Court will assume familiarity with its October 21,
2003 Opinion.

-2-