GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-878 – LPS-CJB, July 20, 2016.

Burke, M. J. Report and recommendation recommending that defendant’s motion to dismiss plaintiff’s induced infringement claim be denied. Oral argument took place on March 1, 2016.

The disputed technology relates to generic carvedilol tablets. Defendant amended its ANDA to carve out an indication for the use of the drug for decreasing mortality caused by congestive heart failure. Plaintiff brought claims of indirect infringement and defendant successfully moved to dismiss both induced infringement and contributory infringement claims, which led to the filing of a second amended complaint. Defendant asserts that the claims of induced infringement for the period of time when its label carved out the CHF indication. The court finds support for induced infringement due to defendant’s active promotion of its generic tablets prior to and during the relevant time period. Defendant’s promotion of its product as AB rated is insufficient by itself to support a claim of specific intent to infringe. Press releases dated before the patent issued might bear on the mindset of the defendant after the patent issues as long as there was an inducing act performed in that post-issuance period. Defendant’s label also bears an instruction relating to symptomatic heart failure which is similar enough to the carved out indication such that consumers could be misled to practice the claimed method. Finally defendant was aware that its generic tablets were not suitable for substantial non-infringing use. Defendant’s motion to dismiss is denied.