Judge Connolly Grants Plaintiffs’ Request To Preclude Defendant From Maintaining Its Invalidity Defense Based On An Undisclosed Inventorship Theory

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By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’ request to preclude Defendant Sandoz from maintaining its theory that U.S. Patent No. 10,106,548 (“the ‘548 patent”) is invalid under 35 U.S.C. § 102(f) because the ‘548 patent did not disclose as inventors unidentified employees of Pharmorphix.

The Court granted Plaintiff’s request to preclude Sandoz’s invalidity defense based on the undisclosed inventorship theory because Sandoz failed to disclose the theory in its final invalidity contentions and did not disclose the theory until the eve of trial and almost eight months after it served its final invalidity contentions.  Id. at *2-6.  The Court found that “Sandoz’s disclosure of its inventorship theory on the eve of trial and almost eight months after it served its final contentions was unjustified, prejudiced Plaintiffs, and deprived Plaintiffs of the opportunity to cure any prejudice.”  Id. at *6.  After concluding that the balance of the relevant factors weighed in favor of Plaintiffs’ request to preclude Sandoz from pursuing its inventorship theory, the Court granted the request.  Id.

A copy of the Memorandum Order is attached.

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