Forest Laboratories, Llc et al v. Amerigen Pharmaceuticals, Inc. et alREPLY BRIEF re MOTION to Dismiss for Failure to State a Claim Pursuant to FED. R. CIV. P. 12D. Del.October 7, 2016 RLF1 15352233v.1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE FOREST LABORATORIES, LLC, FOREST LABORATORIES HOLDINGS, LTD., ALLERGAN USA, INC., and ADAMAS PHARMACEUTICALS, INC., Plaintiffs, v. AMERIGEN PHARMACEUTICALS, INC., and AMERIGEN PHARMACEUTICALS LTD., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 15-966 (LPS) REPLY BRIEF IN SUPPORT OF AMERIGEN’S MOTION TO DISMISS PURSUANT TO FED. R. CIV. P. 12(b)(6) Of Counsel: William A Rakoczy Paul J. Molino Tara M. Raghavan Eric R. Hunt Kevin P. Burke Patrick C. Kilgore RAKOCZY MOLINO MAZZOCHI SIWIK LLP 6 West Hubbard Street, Suite 500 Chicago, IL 60654 (312) 222-6301 wrakoczy@rmmslegal.com RICHARDS, LAYTON & FINGER, PA Kelly E. Farnan (#4395) One Rodney Square 920 N. King Street Wilmington, DE 19801 (302) 651-7700 farnan@rlf.com Date: October 7, 2016 Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 1 of 15 PageID #: 3745 i RLF1 15352233v.1 TABLE OF CONTENTS TABLE OF AUTHORITIES .......................................................................................................... ii I. INTRODUCTION AND SUMMARY OF THE ARGUMENT .........................................1 II. ARGUMENT .......................................................................................................................3 A. Plaintiffs’ flurry of collateral attacks fails as a matter of law. .................................3 1. The Interim Status Report was not a motion, and the Court’s August 16 Order did not decide Amerigen’s Motion to Dismiss. ...............3 2. Amerigen timely filed this motion barely two weeks after the final judgment in Namenda XR®. ........................................................................4 3. Amerigen’s motion relies on intrinsic evidence, this Court’s final judgment, and black-letter law to prove collateral estoppel bars Plaintiffs’ claims. .........................................................................................5 B. Plaintiffs do not dispute that collateral estoppel applies to their claims based on the Overlap Patents, and thus to the representative ‘794 patent. ..............6 C. Collateral estoppel also bars the claims based on the remaining Newly Asserted Patents. ......................................................................................................8 III. CONCLUSION ..................................................................................................................10 Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 2 of 15 PageID #: 3746 ii RLF1 15352233v.1 TABLE OF AUTHORITIES FEDERAL CASES Anderson v. Comm’r Internal Revenue, 698 F.3d 160 (3d Cir. 2012) ....................................................................................................... 5 Beepot v. J.P. Morgan Chase Nat’l Corp. Servs., Inc., No. 3:10-CV-423-J-34PDB, 2014 WL 11412694 (M.D. Fla. Apr. 10, 2014) ............................ 4 Buck v. Hampton Twp. Sch. Dist., 452 F.3d 256 (3d Cir. 2006) ....................................................................................................... 5 Galderma Labs. Inc. v. Amneal Pharm., LLC, 921 F. Supp. 2d 278 (D. Del. 2012) ............................................................................................ 8 Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709 (Fed. Cir. 1998) .................................................................................................... 9 M & M Stone Co. v. Pennsylvania, 388 F. App’x 156 (3d Cir. 2010) ................................................................................................ 5 Montana v. United States, 440 U.S. 147 (1979) .................................................................................................................... 5 Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013) ............................................................................................ 6, 10 Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373 (Fed. Cir. 1999) .................................................................................................. 7 St. Clair Intellectual Prop. Consultants, Inc. v. Samsung Elecs. Co., Civ. A. No. 04-1436-JJF-LPS, 2010 WL 1213367 (D. Del. Mar. 28, 2010) ............................. 1 Teva Pharms USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015) ................................................................................................................... 6 Thibault v. Del. Tech. & Cmty. Coll., C.A. No. 11-1080-MPT, 2012 WL 2073847 (D. Del. June 8, 2012) ......................................... 5 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) .................................................................................................. 9 FEDERAL RULES FED. R. CIV. P. 7(b)(1) .................................................................................................................... 4 Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 3 of 15 PageID #: 3747 iii RLF1 15352233v.1 LOCAL RULES D. Del. L.R. 7.1 ............................................................................................................................... 4 Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 4 of 15 PageID #: 3748 1 RLF1 15352233v.1 I. INTRODUCTION AND SUMMARY OF THE ARGUMENT Plaintiffs’ actions have silently acknowledged that collateral estoppel bars their claims based on the Overlap Patents1 and on the ‘794 patent-a representative Newly Asserted Patent with a specification nearly word-for-word identical to the ‘397 Overlap Patent. Rather than blunting Amerigen’s motion, Plaintiffs’ strategic retreat confirms this Court should grant Amerigen’s motion as to those patents and all of the Went patents. Plaintiffs have no legal right to bring or maintain suit based on invalid patent claims. Plaintiffs’ response is largely based on an erroneous assumption: Plaintiffs claim that this Court’s stay of claim construction proceedings concerning the Overlap Patents has expanded to a complete stay of the litigation on those patents. But neither the Scheduling Order instructing the parties to submit an Interim Status Report (D.I. 22 ¶ 8 (“potentially streamline the Markman proceedings”)), the Interim Status Report itself (D.I. 45 at 3-4 (“streamlining the claim construction proceedings”), nor the Court’s resulting Order (D.I. 49 (“[r]egarding the . . . claim construction proceedings”)) addressed a stay of anything beyond claim construction.2 There is no general stay preventing the Court from addressing the merits of this motion as to the Overlap Patents. On the merits, Plaintiffs’ request to stay claim construction regarding the Overlap Patents shows that-as Amerigen argues-the Namenda XR® claim construction and invalidity judgment apply equally to all asserted Overlap Patent claims. If not, there would be no reason to stay their claim construction here. But for that reason, the Court must dismiss the Overlap 1 This brief uses the shorthand terms defined in Defendants’ Opening Brief (D.I. 47.) 2 For example, none of these papers established, or even mentioned, the required factors to stay Amerigen’s counterclaims against the Overlap Patents. See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Samsung Elecs. Co., Civ. A. No. 04-1436-JJF-LPS, 2010 WL 1213367, at *3 (D. Del. Mar. 28, 2010). Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 5 of 15 PageID #: 3749 2 RLF1 15352233v.1 Patents. Plaintiffs’ offer to drop the asserted claims of the representative ‘794 patent-which Amerigen’s opening brief shows is nearly identical to patents ruled invalid-proves that even Plaintiffs cannot bring themselves to argue that “different” intrinsic evidence could justify a different result for that patent. (See D.I. 45, Ex. A at 3-4.) The Court should likewise dismiss all claims based on the Newly Asserted Patents. Those patent claims include the “less than . . . 50% dC/dT” limitations this Court ruled are indefinite, supported by intrinsic evidence that is identical in all relevant respects to the Overlap Patents. (See Hunt Decl. Ex. 3, D.I. 48.) Likely for this reason, Plaintiffs’ opposition practically ignores the merits, and focuses instead on meritless collateral attacks. Plaintiffs argue-citing no legal support-that Amerigen’s motion was untimely even though the Namenda XR® judgment issued barely two weeks earlier. (See D.I. 59 at 4, 7-8, 11.) Plaintiffs also argue- again citing no legal support-that the Interim Status Report raised these issues and the Court’s August 16 Order decided them by adopting Plaintiffs’ proposal. (See id. at 1-3, 7-8.) These arguments have no basis in law or fact. Plaintiffs also argue that Amerigen cannot meet the Rule 12 standard because the Court must make “all reasonable [factual] inferences in Plaintiffs’ favor” and its Amended Complaint meets the Twombley/Iqbal pleading standards. (Id. at 3, 8-10.) This argument fails both as a matter of fact and a matter of law. First, mere compliance with minimum pleading standards cannot shield a claim from collateral estoppel. Second, there are no well-plead but disputed facts here, because the Amended Complaint makes no factual allegations regarding the substance of the patents-in-suit. (See D.I. 39, passim.) Instead, a known and compact collection of relevant evidence-the Namenda XR® invalidity judgment, the patent claims, specifications, and file histories-sits ready to be reviewed by this Court and interpreted as a matter of law. Disputes Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 6 of 15 PageID #: 3750 3 RLF1 15352233v.1 over the interpretation of documentary evidence do not bar the Court from reviewing that evidence and applying collateral estoppel when warranted. In sum, Plaintiffs’ opposition misses the mark, and the Court should dismiss all infringement claims based on the Went Patents. The law does not allow Plaintiffs to bring or maintain a suit based on invalid patent claims. II. ARGUMENT A. Plaintiffs’ flurry of collateral attacks fails as a matter of law. 1. The Interim Status Report was not a motion, and the Court’s August 16 Order did not decide Amerigen’s Motion to Dismiss. On August 10, 2016-the same day Amerigen filed this motion-the parties also filed an Interim Status Report including proposals for streamlining claim construction given the final judgment in Namenda XR®. (D.I. 45.) Plaintiffs proposed that the Court: (a) enter a stay as to the Overlap Patents pending the Namenda XR® appeal; and (b) continue with the existing claim construction schedule as to U.S. Patent No. 8,039,009 (“the ‘009 patent”) and the Newly Asserted Patents. (See D.I. 45, Ex. A at 7-8.) Amerigen argued that the Newly Asserted Patents required no additional construction, and asked the Court to stay claim construction on all Adamas patents pending the decision on this concurrently-filed motion. (See id., Ex. B at 6.) On August 16, 2016, the Court adopted Plaintiffs’ scheduling proposal, staying claim construction proceedings on the Overlap Patents. (D.I. 49.) Plaintiffs now argue-citing no support-that the August 16 Order denied Amerigen’s motion and effectively ruled that collateral estoppel did not apply. (See D.I. 59 at 1-3, 7-8.) Nothing could be further from the truth, and Plaintiffs are wrong on the facts and the law. The Interim Status Report was, of course, merely a status report; it was not a motion. The report contained competing procedural (scheduling) proposals and arguments supporting Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 7 of 15 PageID #: 3751 4 RLF1 15352233v.1 those proposals. But the status report did not and could not present to the Court any request for substantive relief. See, e.g., Beepot v. J.P. Morgan Chase Nat’l Corp. Servs., Inc., No. 3:10-CV- 423-J-34PDB, 2014 WL 11412694, at *4 (M.D. Fla. Apr. 10, 2014) (“To the extent that Chase seeks affirmative relief in its . . . Status Report, in the form of dismissal of this action, that request is not properly before the Court.”); FED. R. CIV. P. 7(b)(1) (“A request for a court order must be made by motion.”); D. Del. L.R. 7.1.2.(a) (“Unless otherwise ordered, all request for relief shall be presented to the court by motion.”). This Court’s one sentence order “[r]egarding the parties’ disputes with respect to claim construction proceedings” did not and could not address this pending motion, stay it, or rule that collateral estoppel does not apply. (D.I. 49.) Even aside from the fatal and dispositive procedural flaws in Plaintiffs’ argument, the Interim Status Report did not fully brief the issues raised, present all relevant evidence, or provide any opportunity for argument. See D. Del. L.R. 7.1.2.-7.1.4. Indeed, to test this position, imagine Plaintiffs’ response if the Court had adopted Amerigen’s proposal and Amerigen argued that this adoption equated to the Court granting its pending motion to dismiss. There can be no reasonable dispute on this issue; Plaintiffs’ arguments are not credible. There is nothing stopping this Court from deciding this fully-briefed motion. 2. Amerigen timely filed this motion barely two weeks after the final judgment in Namenda XR®. Plaintiffs argue-again citing no legal support-that Amerigen’s motion was untimely, making much of the January 2016 Namenda XR® Markman ruling, the time since the original Complaint, and the parties’ ordinary litigation activities. (See D.I. 59 at 4, 7-8, 11.) These complaints are meritless because Amerigen filed its motion barely two weeks after this Court’s final judgment was entered in Namenda XR®. Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 8 of 15 PageID #: 3752 5 RLF1 15352233v.1 As Plaintiffs well know, final judgment irrefutably establishes, for purposes of collateral estoppel, that the “issue has been actually and necessarily determined by a court of competent jurisdiction.” Anderson v. Comm’r Internal Revenue, 698 F.3d 160, 164 (3d Cir. 2012) (quoting Montana v. United States, 440 U.S. 147, 153-54 (1979)). The Namenda XR® judgment issued on July 25, 2016. (See Hunt Decl. Ex. 1, D.I. 48.) Here, Plaintiffs filed the Amended Complaint on July 27, 2016. (D.I. 39.) Amerigen filed this motion and accompanying papers on August 10, 2016. (D.I. 46-48.) This filing was timely-shortly after the final judgment and within the time limits set by the Federal Rules of Civil Procedure. Plaintiffs’ timing arguments are unavailing. 3. Amerigen’s motion relies on intrinsic evidence, this Court’s final judgment, and black-letter law to prove collateral estoppel bars Plaintiffs’ claims. Plaintiffs argue that the Court must deny Amerigen’s motion as to the Newly Asserted Patents because at the Rule 12 stage the Court must draw “all reasonable [factual] inferences in Plaintiffs’ favor” and the Amended Complaint meets the Twombley/Iqbal pleading standards. (D.I. 59 at 3, 8-10.) These two legal assertions may be correct, but they do not support Plaintiffs’ argument-yet another diversion that fails as a matter of law. First, merely complying with the minimum pleading standards cannot shield a plaintiff from collateral estoppel. The law is clear that collateral estoppel can be raised, and the relevant evidence reviewed, in the Rule 12(b)(6) context. See M & M Stone Co. v. Pennsylvania, 388 F. App’x 156, 162 (3d Cir. 2010); Buck v. Hampton Twp. Sch. Dist., 452 F.3d 256, 260 (3d Cir. 2006); Thibault v. Del. Tech. & Cmty. Coll., C.A. No. 11-1080-MPT, 2012 WL 2073847, at *2 (D. Del. June 8, 2012). Amerigen has seen, and Plaintiffs have cited, no cases suggesting that the Twombley/Iqbal pleading standards convert from a light shield for defendants into a sword to cut down collateral estoppel motions. Second, there are no relevant “reasonable inferences” to Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 9 of 15 PageID #: 3753 6 RLF1 15352233v.1 be drawn in Plaintiffs’ favor, because the Amended Complaint makes no factual allegations regarding the substance of the asserted patents, their claims, their intrinsic evidence, or any differences between them. (See D.I. 39, passim.) Instead, the pleading merely recites the standard legal conclusions that the patents were “duly and legally issued,” and that Amerigen purportedly infringed the patents by filing its ANDA and serving notice letters. (Id. at ¶¶ 12-24, 30-31.) Put simply, there are no “well-plead” but disputed facts relevant to collateral estoppel. Instead, a known and limited collection of relevant evidence exists-the Namenda XR® invalidity judgment, the patent claims, specifications, and file histories-sitting ready to be reviewed by this Court and interpreted as a matter of law. That the parties dispute the meaning of certain claim terms is irrelevant here, because those disputes are matters of law. See, e.g., Teva Pharms USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (“[T]he construction of a patent, including terms of art within its claim, is not for a jury but exclusively for the court to determine. That is so even where the construction of a term of art has evidentiary underpinnings.” (internal quotation marks omitted)). Disputes over the interpretation and legal meaning of documents do not preclude the Court from resolving those disputes and ruling on collateral estoppel. What is more, there is no dispute that collateral estoppel can bar claims based on related patents not previously adjudicated. See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“[I]t is the identity of the issues that were litigated that determines whether collateral estoppel should apply.” (emphasis added)). The Court is fully capable of making this determination based on the current record. B. Plaintiffs do not dispute that collateral estoppel applies to their claims based on the Overlap Patents, and thus to the representative ‘794 patent. The stay of claim construction Plaintiffs requested and the Court granted acknowledges that the Namenda XR® result will apply to all asserted Overlap Patent claims. The identical Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 10 of 15 PageID #: 3754 7 RLF1 15352233v.1 intrinsic evidence and substantively identical claim language across the Overlap Patents compels this conclusion. (See D.I. 47 at 2, 5-9; D.I. 39-1 to -2; Hunt Decl. Exs. 2-4, 7-11, D.I. 48.) But for all the reasons described in Amerigen’s opening brief, this admission that the Namenda XR® invalidity judgment controls also essentially concedes that collateral estoppel bars Plaintiffs’ infringement claims based on the Overlap Patents. (See D.I. 47 at 9-12.) Indeed, Plaintiffs do not dispute that collateral estoppel applies to the Overlap Patents- but assert that a stay eliminates the need for dismissal, and that courts may choose not to apply collateral estoppel using their case management discretion. (D.I. 59 at 10-11.) While courts have discretion to manage their docket and schedules, Plaintiffs’ cited cases are inapposite. Pharmacia & Upjohn Co. v. Mylan Pharm., Inc. reiterates the well-established rule that a pending appeal or pending post-trial motion does not change the finality or preclusive effect of a final judgment. 170 F.3d 1373, 1381-82 (Fed. Cir. 1999). Plaintiffs seem to cite the statement that “it may be preferable in a particular case for a district court to allow some time to pass to allow for the resolution of post-trial motions before according a judgment collateral estoppel effect . . . a district court need not do so.” Id. Any discretion implied by this statement does not help Plaintiffs here because the facts are inapposite3 and the Court’s statement is at most one of preference.4 This statement cannot be stretched to support the argument that the Court should refuse to apply collateral estoppel to the Overlap Patents. 3 For example, no post-trial motions can be filed at this stage in the Namenda XR® litigation. 4 The Pharmacia court also noted that cases involving judgments given preclusive effect with post-trial motions pending will be rare, given the speed with which such motions are typically resolved. Pharmacia & Upjohn, 170 F.3d at 1382 n.5. Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 11 of 15 PageID #: 3755 8 RLF1 15352233v.1 The second case helps Plaintiffs even less. In Galderma, this Court “assum[ed], without deciding, that concerns of judicial economy may trump proper application of collateral estoppel,” but noted this assumption may contravene another core purpose of that doctrine: Galderma’s unstated assumption that matters of judicial economy may preclude application of collateral estoppel may be incorrect. See generally Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326, 99 S.Ct. 645, 58 L.Ed.2d 552 (1979) (“Collateral estoppel ... has the dual purpose of protecting litigants from the burden of relitigating an identical issue with the same party or his privy and of promoting judicial economy by preventing needless litigation.”). Galderma Labs. Inc. v. Amneal Pharm., LLC, 921 F. Supp. 2d 278, 282 (D. Del. 2012). The Galderma Court foresaw no likely inefficiences and entered judgment for Amneal, finding that “the application of collateral estoppel is compelled because precisely the [identical] issue . . . was previously litigated and decided against Galderma.” Id. at 283 (emphasis added). Here, just as in Galderma, precisely the identical issue-the construction and validity of Overlap Patent claims reciting the “less than . . . 50% dC/dT” limitations”-was previously litigated and decided against Plaintiffs. Plaintiffs’ supposed factual distinction is also without merit-the stay here is limited to issues of claim construction. Collateral estoppel bars Plaintiffs’ claims based on the Overlap Patents, and also necessarily bars Plaintiffs’ claims based on the representative ‘794 patent given the near identity of the intrinsic evidence. The Court should, therefore, dismiss those claims, because Plaintiffs have no legal right to maintain a suit based on invalid patents. C. Collateral estoppel also bars the claims based on the remaining Newly Asserted Patents. Plaintiffs do their best to ignore the substance of the collateral estoppel issues related to the Newly Asserted Patents, instead repeating the phrases “different patents,” “different claim structure,” and “different intrinsic evidence” as if they automatically resolved any dispute. (D.I. 59 at 12-18.) In contrast to Amerigen’s opening brief and exhibits, Plaintiffs provide no detailed analysis of the intrinsic evidence or the alleged “differences” precluding the application Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 12 of 15 PageID #: 3756 9 RLF1 15352233v.1 of collateral estoppel. Instead, Plaintiffs merely cite back to their portion of the Interim Status Report, which discussed the issues at a very high level of generality, including essentially no specific analysis and almost no citations to the patents. (See D.I. 45, Ex. A at 4-7.) Indeed, in a twenty-page brief, Plaintiffs barely cite their patents. (See generally D.I. 59.) Plaintiffs do, however, build up and knock down straw-man arguments Amerigen has not made. (See id. at 12-18.) For example, Amerigen never argues that the Court should not review the intrinsic evidence of the Newly Asserted Patents-claims, specification, and file histories- as needed to analyze collateral estoppel. (See id.) Indeed, the Court should do so, and Amerigen’s papers present the evidence required for that analysis. Specifically, Amerigen has cited the patents, charted their relationships, specifically identified the minimal differences in the specifications, and presented charts of the claim language to prove that collateral estoppel applies because the intrinsic evidence regarding the indefinite “less than . . . 50% dC/dT” claim limitations is identical or substantively identical. (See D.I. 47 at 6-9, 10-17; Hunt Decl. Exs. 2-4, D.I. 48.) Plaintiffs present no substantive response to these arguments, and seem to hope that the Court will simply head to a Markman hearing where Plaintiffs will have a second chance to haul in an expert witness and argue for their current preferred interpretation of the “less than . . . 50% dC/dT” claim limitations having had the benefit of their Namenda XR® experience.5 Amerigen respectfully urges the Court to preclude Plaintiffs from sliding past collateral estoppel in order to 5 Plaintiffs refer ominously to “invit[ing] reversible error” if the Court precludes them from bringing in a new expert to argue that the “less than . . . 50% dC/dT” claim limitation means something different here than in the Overlap Patents despite the claim language, the identity of inventorship, the intrinsic evidence, and the close family relationship between the patents. (D.I. 59 at 19.) This argument falls flat, of course, because no court is ever required to hear expert testimony during claim construction, or even required to hold a hearing. See, e.g., Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (holding “trial courts have broad discretion” to hear expert testimony); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction . . . is not an obligatory exercise in redundancy.”). Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 13 of 15 PageID #: 3757 10 RLF1 15352233v.1 re-litigate the construction of the “less than . . . 50% dC/dT” claim limitations. The record shows that, despite any “slightly different language [used] to describe substantially the same limitation,” Ohio Willow Wood, 735 F.3d at 1342, collateral estoppel bars Plaintiffs’ claims based on the Newly Asserted Patents. The Court should therefore dismiss those claims. Again, Plaintiffs have to no legal right to bring or maintain a suit based on invalid patent claims. * * * Finally, Plaintiffs effectively concede by their silence that three of the four collateral estoppel elements are satisfied here. Plaintiffs do not argue that the validity of the “less than . . . 50% dC/dT” claim limitations were not “litigated in” the Namenda XR® case or “necessary” to that decision, or that Plaintiffs were not adequately represented. (See D.I. 59 at 19.) Instead, Plaintiffs argue that because the validity issues are allegedly not identical, “the other prongs of the collateral estoppel test are not satisfied.” (Id.) This circular argument adds nothing to the analysis, and in no way prevents the Court from applying collateral estoppel here. III. CONCLUSION Plaintiffs have effectively admitted that collateral estoppel arising from the Namenda XR® litigation bars their claims based on the Overlap Patents and the representative ‘794 Newly Asserted Patent. The common claim language, close relationship between the Overlap Patents and Newly Asserted Patents, and the intrinsic evidence establish that collateral estoppel also bars Plaintiffs’ claims based on the remaining Newly Asserted Patents. For the reasons described above and in Amerigen’s opening papers, the Court should grant this motion and dismiss Plaintiffs’ infringement claims based on the Went patents under Federal Rule of Civil Procedure 12(b)(6) due to collateral estoppel arising from the final judgment in Namenda XR®. Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 14 of 15 PageID #: 3758 11 RLF1 15352233v.1 OF COUNSEL: William A. Rakoczy Paul J. Molino Tara M. Raghavan Eric R. Hunt Kevin P. Burke Patrick C. Kilgore Rakoczy Molino Mazzochi Siwik LLP 6 West Hubbard Street, Suite 500 Chicago, IL 60654 (312) 222-6301 /s/ Kelly E. Farnan Kelly E. Farnan (#4395) Richards, Layton & Finger, PA One Rodney Square 920 N. King Street Wilmington, DE 19801 (302) 651-7700 farnan@rlf.com Attorneys for Defendants Amerigen Pharmaceuticals, Inc. and Amerigen Pharmaceuticals Ltd. Case 1:15-cv-00966-LPS Document 66 Filed 10/07/16 Page 15 of 15 PageID #: 3759
