UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

SHIRE LLC et al.,

Plaintiffs, 

v.

AMNEAL PHARMACEUTICALS, LLC et

al.,

Defendants.

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Civil Action No. 11-3781 (SRC)

ORDER

CHESLER, District Judge

This matter having come before this Court on six motions for summary judgment,

pursuant to Federal Rule of Civil Procedure 56: 1) the motion for partial summary judgment of

anticipation of claims 1, 2, and 5 of U.S. Patent No. 7,662,787 by Defendants Actavis Elizabeth

LLC, Actavis LLC, Amneal Pharmaceuticals, LLC, Johnson Matthey Inc., Johnson Matthey

Pharmaceutical Materials, Mylan Inc., Mylan Pharmaceuticals, Inc., Roxane Laboratories Inc.,

and Sandoz Inc. (collectively, “Defendants”); 2) Defendants’ motion for partial summary

judgment of noninfringement; 3) Defendants’ motion for partial summary judgment of invalidity

under 35 U.S.C. § 101; 4) Defendants’ motion for partial summary judgment of no willful

infringement; 5) the motion for partial summary judgment of no indirect infringement by

Defendants Johnson Matthey Inc. and Johnson Matthey Pharmaceutical Materials (collectively,

“JM”); and 6) the motion for summary judgment that claims of the ’630, ’787, ’253, and ’486

patents are infringed and not invalid by Plaintiffs Shire LLC and Shire Development LLC

(collectively, “Plaintiffs”); and the Court having considered the parties’ submissions; and the

Court having heard oral argument on April 29, 2014; and for the reasons stated in the

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accompanying Opinion, and good cause appearing

IT IS on this 23 day of June, 2014 rd

ORDERED that Plaintiffs’ motion for summary judgment that claims of the ’630, ’787,

’253, and ’486 patents are infringed and not invalid (Docket Entry No. 496) is GRANTED in

part and DENIED in part; and it is further

ORDERED that, as to the issue of no invalidity, Plaintiffs’ motion for summary

judgment (Docket Entry No. 496) is GRANTED, and, as to the claims at issue in the ’630, ’787,

’253, and ’486 patents, Judgment of no invalidity is hereby entered in Plaintiffs’ favor; and it is

further

ORDERED that, as to the issue of infringement, as to the ANDA Defendants, Plaintiffs’

motion (Docket Entry No. 496) is GRANTED, and Judgment is hereby entered in Plaintiffs’

favor that the ANDA Defendants have infringed the compound claims at issue of the ’630, ’787,

’253, and ’486 patents; and it is further

ORDERED that, as to the issue of inducement of infringement, as to the ANDA

Defendants, Plaintiffs’ motion (Docket Entry No. 496) is GRANTED, and Judgment is hereby

entered in Plaintiffs’ favor that the ANDA Defendants have induced infringement of the method

claim at issue, claim 4 of the ’486 patent; and it is further

ORDERED that, as to the issue of infringement, as to JM, as to the issue of JM’s direct

infringement of the compound claims, Plaintiffs’ motion (Docket Entry No. 496) is DENIED;

and it is further

ORDERED that, as to the issue of infringement, as to JM, as to the issue of JM’s

inducement of infringement of the compound claims, Plaintiffs’ motion (Docket Entry No. 496) 

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is GRANTED, and Judgment is hereby entered in Plaintiffs’ favor that JM has induced

infringement of the compound claims at issue of the ’630, ’787, and ’253 patents; and it is further 

ORDERED that Defendants’ motion for partial summary judgment of anticipation of

claims 1, 2, and 5 of U.S. Patent No. 7,662,787 (Docket Entry No. 499) is DENIED for lack of

subject matter jurisdiction; and it is further

ORDERED that Defendants’ motion for partial summary judgment of no willful

infringement (Docket Entry No. 515) is GRANTED, and Judgment on the issue of willful

infringement is hereby entered in Defendants’ favor; and it is further 

ORDERED that Defendants’ motion for partial summary judgment of invalidity under

35 U.S.C. § 101 (Docket Entry No. 516) is DENIED; and it is further

ORDERED that Defendants’ motion for partial summary judgment of noninfringement

(Docket Entry No. 518) is GRANTED; and it is further

ORDERED that any claims in the Amended Complaint for direct infringement of

method claims in the patents at issue are hereby DISMISSED with prejudice, and as to claims in

the Amended Complaint for inducing infringement of claims 2-8 of the ’254 patent, claims 19-24

of the ‘770 patent, and claims 1-6, 8-23, 25-28, 30-35, 37-42, and 44-47 of the ’788 patent,

Judgment on these claims will be entered in the ANDA Defendants’ favor; and it is further

ORDERED that JM’s motion for partial summary judgment of no indirect infringement

(Docket Entry No. 524) is DENIED.

 s/Stanley R. Chesler 

STANLEY R. CHESLER, U.S.D.J.

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