Momenta Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 10-12079-NMG, Memorandum and Order on Final Judgment (D. Mass. Jan. 24, 2014) (Gorton, D.J.).

Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., C.A. No. 11-11681-NMG, Memorandum and Order on Final Judgment (D. Mass Jan. 24, 2014) (Gorton, D.J).

On January 24, 2014, Judge Gorton issued a Memorandum and Order entering a final judgment in each of two suits filed by Momenta Pharmaceuticals, Inc., and Sandoz, Inc. (“Momenta”). The two suits were filed against Teva Pharmaceuticals USA, Inc., and Amphastar Pharmaceuticals, Inc. (along with International Medication Systems, Ltd., Actavis, Inc., and Watson Pharma, Inc.), respectively, and concern infringement of U.S. Patent Nos. 7,575,886 (“the ‘886 patent”) and 7,790,466 (“the ‘466 patent”).

The suits were filed in late 2010 (Teva) and 2011 (Amphastar), and include procedural histories that are not reviewed in detail here. In each suit, evidence produced during discovery led Momenta to decide that it no longer wanted to assert claims of the ‘466 patent. By the time this decision was made, however, the deadline for amending pleadings under the Federal Rules of Civil Procedure had passed, the defendant had already filed a motion for summary judgment, and significant expense had been incurred in litigating claims of the ‘466 patent. In entering a final judgment for these suits, the question presently before the Court is whether to dismiss Momenta’s claims with respect to the ‘466 patent with or without prejudice.

Judge Gorton ultimately found differently in each suit, dismissing the claims in the Teva suit with prejudice and dismissing the claims in the Amphastar suit without prejudice. The decision in each case was based on Momenta’s ability to justify its delay in withdrawing the ‘466 patent allegations.

In the Teva suit, for example, Momenta informed opposing counsel that they were no longer asserting the ‘466 patent in February 2013, and stated that its decision was based on deposition testimony. That testimony, however, had been elicited more than six months earlier and Momenta offered no specific reason for waiting so long.

In contrast, in the Amphastar suit, Momenta informed opposing counsel that they were no longer asserting the ‘466 patent in May 2013 based on documents produced about a month earlier. Furthermore, Amphastar was found to have delayed in producing testing records that Momenta needed to evaluate its infringement theories regarding the ‘466 patent. These facts convinced Judge Gorton to dismiss Momenta’s claims under the ‘466 patent without prejudice despite Momenta’s long delay in taking action, the significant expense incurred by Amphastar, and the existence of a summary judgment motion—all factors that can support dismissing claims with prejudice.