Case 1:11-cv-00220-GMS Document 39 Filed 05/03/13 Page 1 of 2 PageID #: 428

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

) ) ) ) ) ) ) ) ) ) )

ENDO PHARMACEUTICALS INC., Plaintiff, v. MYLAN TECHNOLOGIES INC., MYLAN PHARMACEUTICALS INC., and MYLAN INC.,

C.A. No. 11-220

) Defendants. ____________________________ )

ORDER

(J.
At Wilmington this

_j_

day of May 2013, having considered the defendants' letter

request seeking leave to move for summary judgment (D.I. 32), the plaintiffs responsive letter (D.I. 36), and the defendants' reply (D.I. 37), IT IS HEREBY ORDERED THAT: The plaintiffs request for leave to move for summary judgment (D.I. 32) is DENIED. 1

The defendants, Mylan Technologies Inc., Mylan Pharmaceuticals Inc., and Mylan Inc. (collectively "Mylan"), have requested pennission to move for summary judgment in advance of the Rule 16(b) conference. (D.I. 32.) Mylan offers two justifications for summary judgment practice at this early stage: (1) the regulatory stay is set to expire in the coming months and a motion for summary judgment may result in a prompt resolution of this matter, obviating the need for the court and the parties to engage in anticipated preliminary injunction proceedings; and (2) certain statements made by both the Chief Operating Officer and the lead counsel for the plaintiff, Endo Phannaceuticals Inc. ("Endo"), supposedly confinn that Mylan's ANDA product does not have a "hydrophilic adhesive mixture," which Mylan contends is a limitation required in every claim of U.S. Patent No. 5, 741,510 (the "'510 Patent"). (D.I. 37 at l.) The court believes summary judgment briefing would be wasteful and premature at this stage. Endo notes three potential barriers to summary judgment. (D.I. 36 at 1-2.) First, Endo has had no fonnal discovery ofMylan's ANDA product or an opportunity to consult with experts regarding such discovery. (Jd at 1.) As such, Endo warns that any summary judgment motion would be met by a Rule 56( d) declaration. (Jd) Endo next argues that Mylan's reliance on the supposed "hydrophilic adhesive mixture" limitation is flawed given that the claims of the '510 Patent

Case 1:11-cv-00220-GMS Document 39 Filed 05/03/13 Page 2 of 2 PageID #: 429

do not actually use that phrase. (Jd at 1-2.) Endo submits that claim construction proceedings will be needed to determine what precisely has been claimed. (Jd at 2.) The court finds both these points to be persuasive. Finally, Endo contends that, "even assuming there were no literal infringement, [it] would be entitled to assert a claim for infringement under the doctrine of equivalents," which would require both fact and expert discovery. (Id at 2.) While Mylan correctly notes that a doctrine of equivalents argument is not a panacea, capable of extending a patent claim to structures specifically excluded by the claim language, (D.I. 37 at 2), this response simply leads the court back to Endo's earlier point that claim construction will be needed to make the threshold determination of what the relevant claim language means, see, e.g., Tanabe Seiyaku Co., Ltd v. fTC, 109 F.3d 726, 731 (Fed. Cir. 1997) ("The determination of whether an accused product or process infringes a claim in a patent is universally understood to involve two steps. First, we construe the claim asserted to be infringed to determine its meaning and scope."). For the above reasons, the court finds Mylan's summary judgment request to be inappropriate at this juncture.