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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`MITSUBISHI TANABE PHARMA
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`CORPORATION, JANSSEN
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`PHARMACEUTICALS, INC., JANSSEN
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`PHARAMCEUTICA NV, JANSSEN
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`: Civil Action No. 17-5319 (FLW) (DEA)
`RESEARCH AND DEVELOPMENT, LLC,
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`and CILAG GMBH INTERNATIONAL,
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`Plaintiffs,
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`v.
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`SANDOZ, INC., et al.,
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`Defendants.
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` ORDER
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`THIS MATTER comes before the Court upon the filing of a Complaint by Charles M.
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`Lizza, Esq., counsel for Plaintiffs Mitsubishi Tanabe Pharma Corp, Janssen Pharmaceuticals, Inc.,
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`Janssen Pharmaceutica NV, Janssen Research and Development, LLC, and Cilag GmbH
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`International (collectively, “Plaintiffs”), against Defendant Zydus Pharmaceutical (U.S.A.) Inc.
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`(“Defendant”) for patent infringement in violation of 35 U.S.C. § 271(e)(2); it appearing that
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`Plaintiffs allege that Defendant has infringed the following claims of United States Patents held
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`by Plaintiffs: (1) claims 12 and 20 of United States Patent Number 7,943,788 (“the ’788 patent”);
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`(2) claim 22 of United States Patent Number 8,222,219 (“the ’219 patent”); and (3) claim 26 of
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`United States Patent Number 8,785,403 (“the ’403 patent”) (collectively, “the patents-in-suit”); it
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`appearing that Defendant, through its counsel Sean R. Kelly, Esq., stipulates to infringement of
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`the patents-in-suit, but, in its defense, contends that (1) the asserted claims of the patents-in-suit
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`are invalid as obvious, and (2) the asserted claims of the ’788 patent are invalid under the doctrine
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`of obviousness-type double patenting; it appearing that the Court held a six-day bench trial on the
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`issues of obviousness and obviousness-type double patenting; the Court having stated its findings
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`of fact and conclusions of law, pursuant to Federal Rule of Civil Procedure 52(a), in the Opinion
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`also filed on this date, and for good cause shown,
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`Case 3:17-cv-05319-FLW-DEA Document 244 Filed 03/22/21 Page 2 of 2 PageID: 12189
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`IT IS on this 22nd day of March, 2021,
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`ORDERED that Judgment on Defendant’s affirmative defense to infringement, asserting
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`the invalidity of claims 12 and 20 of the ’788 Patent, claim 22 of the ’219 Patent, and claim 26 of
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`the ’403 Patent based on obviousness, is hereby entered in Plaintiffs’ favor; and it is further
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`ORDERED that Judgment on Defendant’s affirmative defense to infringement, asserting
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`the invalidity of claims 12 and 20 of the ’788 Patent based on obviousness-type double patenting,
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`is hereby entered in Plaintiffs’ favor; and it is further
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`ORDERED that Defendant’s filing of ANDA Nos. 210541 and 210542 constitutes an act
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`of infringement of claims 12 and 20 of the ’788 Patent, claim 22 of the ’219 Patent, and claim 26
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`of the ’403 Patent, and Judgment on Plaintiffs’ claims of infringement, set forth in the Complaint
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`in Civil Action No. 17-5319, is hereby entered in Plaintiffs’ favor, and it is further
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`ORDERED that the effective date of any approval of the drug that is the subject of ANDA
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`Nos. 210541 and 210542 may not be earlier than the date of the expiration of the patents-in-suit;
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`and it is further
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`ORDERED that the parties shall submit a joint, proposed Final Judgment within 10 days
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`of the date of this order; and it is further
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`ORDERED that an unredacted version of this Court’s Opinion shall be filed under
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`temporary seal and that, in accordance with Local Civil Rule 5.3, the parties shall submit a joint
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`submission indicating the portions of this Court’s Opinion that they seek to have redacted, as well
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`as a statement of reasons as to why each redaction is necessary, within 30 days of the date of this
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`Order.
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`/s/ Freda L. Wolfson
`Freda L. Wolfson
`U.S. Chief District Judge
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`2
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