Am. Hardware Manufs. Assoc. v. Reed Elsevier Inc., No. 03 C 9421, 2007 WL 1521185 (N.D. Ill. May 14, 2007) (Moran, J.).
Judge Moran denied in part plaintiff’s motion to strike defendants’ confidentiality designations regarding the deposition of defendants’ former CEO. Defendants designated as “Highly Confidential,” among other portions of the deposition, those portions in which one of defendants’ customer contracts (the “Contract”) was discussed. Defendants argued that the terms of the Contract were trade secrets and, therefore, should be given the strongest confidentiality protection available pursuant to the parties’ Protective Order. Magistrate Judge Mason previously reviewed the designation, held that the Contract was not likely trade secret and reduced the related designations to “Confidential.” Judge Moran agreed with Judge Mason, rejecting the argument that the Contract was a trade secret as “conclusory and vague.” And Judge Moran agreed that the Contract warranted a “Confidential” designation. Judge Moran also explained that while the deposition and related documents would be protected by the Protective Order during discovery, they would not when the Court ruled on dispositive motion or held trial, quoting the Seventh Circuit:
“Secrecy is fine at the discovery stage, before the material enters the judicial record” those documents that “influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality.” Baxter Int’l, Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir. 2002). Thus, at the summary judgment, trial or appellate stage, documents that have previously been deemed confidential may not retain such a designation. See Little v. Mitsubishi Motor Mfg. of Am. Inc., 2006 WL 1554317, at *3 (C.D. Ill. 2006).

Continue Reading Contract Terms are Not Trade Secret

Abbott Labs. v. Sandoz, Inc., No. 07 C 1721, Slip op. (N.D. Ill. May 3, 2007) (Anderson, J.).
Judge Anderson denied plaintiffs’ motion for a preliminary injunction to prevent defendants Sandoz, Inc. (“Sandoz”) and Teva Pharmaceutical Industries, Ltd. (“Teva”) from selling a generic version of plaintiff Abbott Laboratories’ (“Abbott”) antibiotic cefdinir, which it markets using the name Omnicef. Plaintiffs’ original patent, U.S. Patent No. 4,559,334 (the “‘334 patent”), covering a form of cefdinir expired on Sunday, May 6, 2007 at 10:59 p.m. CDT. Plaintiffs’ second patent, U.S. Patent No. 4,935,507 (the “‘507 patent”), covering a crystalline cefdinir, does not expire until December 4, 2011. Plaintiffs argued that Sandoz’s and Teva’s respective formulations of cefdinir (the “accused products”), which the parties agree can be classified as cefdinir monohydrate, infringed the ‘507 patent and, therefore, sales of the accused products should be enjoined. The Court, with agreement of the parties, adopted a prior claim construction from Judge Payne of the E.D. Virginia for purposes of the PI determination. Using Judge Payne’s construction, the Court held that the accused products did not likely infringe the ‘507 patent. First, cefdinir monohydrate only displayed four of the seven peaks in an x-ray diffraction pattern that the ‘507 patent identified as indicative of crystalline cefdinir within the +/-.1 degree margin of error that the Court determined was the proper construction of the ‘507 patent’s “about” qualifier. Second, the Court held that “trace” amounts of crystalline cefdinir that were allegedly in the accused products in addition to the cefdinir monohydrate did not likely amount to literal infringement.

Continue Reading Denial of PI Permits Sale of Generic Antibiotic

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott’s motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott’s intent to deceive the PTO  based upon Abbott’s failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.

Continue Reading Preliminary Injunction Granted Despite Likely Inequitable Conduct Because Likely-Tainted Claims Were Voluntarily Withdrawn From Prosecution

Abbott Labs. v. Mylan Pharms., Inc., No. 05 C 6561, 2007 WL 625496 (N.D. Ill. Feb. 23, 2007) (Kendall, J.).

Judge Kendall denied plaintiff’s, Abbott, Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s, Mylan, antitrust counterclaims.  Mylan alleged that two Abbott employees submitted declarations and/or testimony stating the weight and structure of certain

Abbott Labs. v. Andrx Pharms., Inc., No. 05 C 1490, 2007 WL 551551 (N.D. Ill. Feb. 20, 2007) (Brown, Mag. J.).*

The Court denied defendant’s motion to compel production of attorney-client privileged documents pursuant to the crime-fraud exception.  Defendant argued that plaintiff’s failure to disclose full results from two studies with conflicting results (for

On the front page of yesterday’s Business section, the Tribune ran a story about pharmaceutial companies developing combination drugs – Combo Pills Perk Up Firms’ Profits.  The combination pills, for example a pill containing medicine to treat both high cholesterol and high blood pressure, have dual advantages:  1) patients are required to take fewer pills and the fewer the number of pills a person must take, the more likely they are to take all of their pills; and 2) patents are likely available on the combined drugs, extending patent protection.  The Tribune reported that dozens of combination pills are likely being developed, including in areas such as heart disease, asthma and depression.  For example, the article reports that Abbott Labs and AstraZeneca announced plans last year to combine their two popular cholesterol drugs, Tricor and Crestor respectively, into a single pill to lower cardiovascular disease risk (the #1 killer according to the article).

Continue Reading Tribune on Patents

Abbott Labs. v. Andrx Pharm., Inc., No. 06-1101, __ F.3d __ (Fed. Cir. 2007).

While this is not a Northern District case, it is relevant to the Blog because it is an appeal of a Northern District case and because it confirms Judge Coar’s ruling (discussed here) that a preliminary injunction holding lacked preclusive effect in the related case Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006).  In this patent dispute plaintiff, Abbott Laboratories ("Abbott"), alleged that defendant’s, Andrx Pharmacueticals ("Andrx") sale of a generic form of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative) which Abbott markets as Biaxin XL.  The Northern District held that Abbott had established a likelihood of success on the merits of its infringement claim and that Andrx had not established a likelihood that the patent would be held invalid.  As a result of those holdings, the Northern District issued a preliminary injunction.  In its appeal, Andrx argued that Abbott was precluded from obtaining a preliminary injunction because the Federal Circuit overturned a previous Northern District preliminary injunction for Abbott against another generic antibiotic producer Teva Pharmaceuticals ("Teva").  In that case, the Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott’s likelihood of success on the merits into question. 

Continue Reading Federal Circuit Agrees With the Northern District: Preliminary Injunction Holdings Are Not Preclusive

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006) (Coar, J.).

Judge Coar denied plaintiff’s, Abbott Laboratories ("Abbott"), motion for a temporary restraining order ("TRO") to prevent defendant, Sandoz, Inc. ("Sandoz"), from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court had entered a TRO and, ultimately, a preliminary injunction preventing another party, Teva Pharmaceuticals ("Teva"), from selling a generic version of plaintiff’s patented extended release antibiotic, but the Federal Circuit vacated the preliminary injunction.  The Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott’s likelihood of success on the merits into question. 

Continue Reading Federal Circuit’s Preliminary Injunction Ruling Is Not Preclusive

Abbott Labs. V. Andrx Pharm., Inc., No. 05 C 1490, 2006 WL 2092377 (N.D. Ill. July 25, 2006) (Brown, Mag. J.).

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

Continue Reading Be Careful With Privileged Documents