A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Patent Infringement Claims Based on ANDA Filing Dismissed as Moot

In a July 18, 2013 ruling, Judge Sidney H. Stein dismissed the patent infringement claims of Purdue Pharma, L.P. against Mylan Pharmaceuticals Inc. and Impax Laboratories over their Abbreviated New Drug Application filings for generic versions of the original formulation of OxyContin.  After the actions were filed, the Food and Drug Administration determined "that original OxyContin had been withdrawn from sale for reasons of safety or effectiveness," eliminating the ability to file an ANDA to market the drug.  Judge Stein then ordered the defendants to show cause why the suits should not be dismissed as moot, and, after considering their perfunctory responses, ruled that there "can be no doubt that Purdue's infringement actions and defendants non-infringement counterclaims are moot."  The Court also considered whether to dismiss the defendants' invalidity claims, noting that the Court "has discretion to decline to exercise jurisdiction over" a declaratory judgment action, "even though the Court has constitutional jurisdiction over that action."  Since Purdue Pharma had already filed separate suits involving the same patents against the defendants over their ANDA's for a reformulated OxyContin, Judge Stein concluded that the defendants would have the opportunity to litigate the invalidity defenses in those actions.  The Court therefore dismissed the infringement counterclaims and declined to exercise jurisdiction over the invalidity claims.
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