CLOSED

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

 

PROMETHEUS LABORATORIES INC., 

Plaintiff,

v.

ROXANE LABORATORIES, INC., et al.,

Defendants.

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 Civil Case No. 11-230 (FSH)

 Civil Case No. 11-1241 (FSH)

JUDGMENT ORDER

 Date: June 3, 2014

FINAL JUDGMENT ORDER

This matter having come before the Court upon the Complaint (Case No. 11-230, ECF 

No. 1) of Prometheus Laboratories Inc. (“Plaintiff”) alleging in Count I that Defendant Roxane 

Laboratories, Inc.’s (“Roxane”) Paragraph IV Certification and Notice Letter are defective and 

alternatively alleging in Count II that Roxane infringes claims of United States Patent No. 

6,284,770 (“the ’770 patent”);

and the First Amended Complaint (Case No. 11-1241, ECF No. 67) of Plaintiff alleging in 

Count I that Defendants Roxane and Cipla Ltd. (“Cipla”) (collectively “Defendants”) infringe 

claims of the ’770 patent and in Count II that Defendants infringe claims of United States Patent 

No. 6,175,014 (“the ’014 patent”); 

and upon the First through Fourth Counterclaims of Cipla (Case No. 11-1241, ECF No. 

175) seeking declaratory judgment of non-infringement and invalidity of the claims of the ’770 

patent and ’014 patent; 

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and the parties having dismissed without prejudice their respective claims and 

counterclaims pertaining to the ’014 patent (Plaintiff’s Count II and Cipla’s Second and Fourth 

Counterclaims in Case No. 11-1241);

and having conducted a non-jury trial on February 10, 11, 18, and 20 regarding the ’770 

patent (Plaintiff’s Counts I and II in Case No. 11-230 and Plaintiff’s Count I and Cipla’s First 

and Third Counterclaims in Case No. 11-1241);

and having had the opportunity to consider the trial evidence and having heard the 

parties’ closing arguments on April 16, 2014, for the reasons set forth in the Findings of Fact and 

Conclusions of Law dated May 21, 2014, the Court having found that Defendants have proven 

their invalidity defenses of obviousness and obviousness-type double patenting of the ’770 patent 

and therefore having ruled in favor of Defendants;

IT IS this 3rd day of June, 2014

ORDERED AND ADJUDGED as follows:

1. For the reasons set forth in the Court’s Findings of Fact and Conclusions 

of Law dated May 21, 2014 (Case No. 11-230, ECF No. 313; Case No. 11-1241, ECF 

No. 415), the ’770 patent is invalid for the following reasons: (a) obviousness under 35 

U.S.C. § 103; and (b) obviousness-type double patenting;

2. All requests for relief in Plaintiff’s Complaint (Case No. 11-230, 

ECF No. 1) are denied. All requests for relief pertaining to the ’770 patent in 

Plaintiff’s First Amended Complaint (Case No. 11-1241, ECF No. 67) are 

denied; 

3. Cipla’s Third Counterclaim, for declaratory judgment of invalidity 

of the ’770 patent, is granted;

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4. Cipla’s First Counterclaim, for declaratory judgment of noninfringement of the ’770 patent, is moot in light of the Court’s finding that the 

claims of the ’770 patent are invalid due to obviousness; 

5. Pursuant to Fed. R. Civ. P. 58, Final Judgment is entered in favor 

of Roxane and Cipla and against Prometheus;

6. In the event Prometheus files an appeal from this Final Judgment, 

any motion for attorneys’ fees and/or costs under Fed. R. Civ. P. 54(d), 

including any related discovery, to which Defendants contend they are entitled 

in connection with their respective claims that this case is exceptional under 35 

U.S.C. § 285, shall be considered timely filed if filed and served within thirty 

(30) days after final disposition of any such appeal; and

7. In the event Prometheus does not file an appeal from this Final 

Judgment, any motion for attorneys’ fees and/or costs under Fed. R. Civ. P. 

54(d), including any related discovery to which Defendants contend they are 

entitled in connection with their respective claims that this case is exceptional 

under 35 U.S.C. § 285, shall be considered timely filed if filed and served within 

30 days after the expiration of the time for filing a notice of appeal under Fed. R. 

App. P. 3 and 4.

Dated: June 3, 2014

/s/ Faith S. Hochberg__________

Hon. Faith S. Hochberg, U.S.D.J.

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