LEONARD P. STARK, District Judge.
WHEREAS, Magistrate Judge Burke issued a 44-page Report and Recommendation (the "Report") (D.I. 370),
WHEREAS, on May 30, 2017, both GSK and Defendants objected to the Report (D.I. 384 ("GSK Objections" or "GSK Objs"); D.I. 387 ("Defendants Objections" or "Defs Objs"));
WHEREAS, on June 6, 2017, both parties responded to the opposing Objections (D.I. 401 ("Defendants Response" or "Defs Resp"); D.I. 402 ("GSK Response" or "GSK Resp"));
WHEREAS, the Court has considered the parties' objections and responses de novo, see St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691 F.Supp.2d 538, 541-42 (D. Del. 2010); 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(b)(3);
NOW THEREFORE, IT IS HEREBY ORDERED that:
1. Both parties' Objections (D.I. 384; D.I. 387) are OVERRULED, Judge Burke's Report (D.I. 370) is ADOPTED, and the portion of Defendants' motion for summary judgment related to induced infringement (D.I. 248) is DENIED.
2. GSK agrees with the ultimate outcome of the Report, but objects to the Report's suggestion that there is no per se rule that a generic drug manufacturer's label including the patented indication, on its own, is sufficient to establish induced infringement. (GSK Objs at 2) For its position that this per se rule does exist, GSK cites AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1056-61 (Fed. Cir. 2010)
3. GSK objects that there is no difference between pre-launch and post-launch circumstances for purposes of finding inducement. (GSK Objs at 4) The Court has already largely rejected GSK's position in connection with its decision denying GSK's motion in limine that sought to preclude Teva from introducing evidence that doctors do not read (and cannot have been induced by) Teva's label. (See D.I. 379 at 1) ("Unlike in a Hatch-Waxman case, this case involves an already-marketed product; evidence as to how many, if any, physicians and patients read the label on Teva's product (and Teva's understanding of how often its label is read) is probative evidence of Teva's intent and of the amount of damages Teva may owe GSK.") GSK has provided no persuasive basis for the Court to reconsider these conclusions.
4. Additionally, a finding of induced infringement requires the patentee to show both specific intent by the alleged infringer and actual inducement, which generally means a "successful communication between the alleged inducer and the third-party direct infringer." Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012); see also Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d 1315, 1331 (Fed. Cir. 2016) ("Power II"). As the Report found, in the ANDA context (which was the context in which both AstraZeneca and Eli Lilly arose) — where a claim of induced infringement is filed before the generic has launched its product and, necessarily, before the generic has even attempted to communicate with any direct infringer — the focus must be on intent, rather than actual inducement. (Report at 24-25) Were it otherwise, no generic filer could ever be found liable for induced infringement in a pre-launch context, as no patentee could ever prove "a `successful communication between the alleged inducer and third-party direct infringer'" without the generic drug having been launched. (Id.) "Here, in contrast to the timing of the Eli Lilly and AstraZeneca lawsuits, GSK filed these actions almost seven years
5. The Court disagrees with GSK's assessment that the Report "goes astray by suggesting that a generic drug manufacturer whose product labeling instructs others to use the product in an infringing manner might nonetheless escape inducement liability." (GSK Objs at 1) (citing Report at 24-27) A generic drug manufacturer who has launched its product and whose label instructs others to use that product in an infringing manner might nonetheless escape inducement liability if the patentee fails to prove the elements of an induced infringement claim, including "a successful communication between the alleged inducer [i.e., generic drug manufacturer] and third-party direct infringer [e.g., a prescribing physician]." As the Federal Circuit stated in AstraZeneca, if the generic manufacturer's label "instructs users to perform the patented method," then "[t]he proposed label
6. Defendants object to the Report's denial of summary judgment of no induced infringement, contending that Defendants' "undisputed direct evidence that doctors do not consult labels or other publications by generic companies in making prescribing decisions" outweighs GSK's circumstantial evidence to the contrary. (Defs Objs at 1) The Court disagrees with Defendants' assessment of the record; in the Court's view, Defendants' evidence is
7. The Court agrees with Judge Burke that "so long as there is
8. The Court has considered de nova each of the other arguments raised by the parties in their Objections and finds that each of them lacks merit and requires no further discussion.