District Judge Thomas P. Griesa granted defendant Teva Pharmaceuticals USA, Inc.’s motion for summary judgment that collateral estoppel barred plaintiff Endo Pharmaceuticals Inc.’s claims to one of three patents in suit and denied Teva’s motion for summary judgment with regard to the other two patents in suit. Plaintiffs sued Teva for infringement of U.S. Patent Nos. 8,114,383 (“the ’383 patent), 8,309,060 (“the ’060 Patent”), and 8,192,722 (“the ’722 Patent”), all relating to thermoforming technology, in response to Teva’s applications to the Food and Drug Administration to market generic painkillers.The court granted Teva’s motion for summary judgment of collateral estoppel with regard to claims 1, 2, 5, 7, and 9 of the ’383 patent because the S.D.N.Y. held claims 1, 2, 5, 7, and 8 invalid in the earlier case In re Oxycotin Antitrust Litigation. The court reasoned that collateral estoppel applies to claim 9 “with equal force” even though its validity was not adjudicated in the earlier case because “there no material difference between the questions of validity with regard to claim 8 and claim 9 of the ’383 Patent.” The court noted that claim 9 is identical to claim 8 of the ‘383 patent, except that they refer to different opioids.

The court denied Teva’s motion for summary judgment with regard to the ’060 patent and the ’722 patent despite “intriguing similarities” between those patents and a patent litigated to final judgment in In re Oxycontin. It explained that Teva did not show that the claims asserted from the ’060 patent and ’722 patent “are similar enough to (and raise materially identical questions as to validity) as the claims adjudicated in the OxyContin litigation.” Therefore, collateral estoppel did not preclude litigation of those claims.

Case: Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 12 Civ. 08060 (TPG) (GWG), 2015 BL 72721, (S.D.N.Y. Mar. 18, 2015)