Medeva Pharma Suisse v. Par Pharmaceutical, No. 2011–1391 (Fed. Cir. 2011)
In an Order issued today, the Federal Circuit denied Medeva's motion to dismiss Par's appeal of a decision from the U.S. District Court for the District of New Jersey that dismissed Par's declaratory judgment claim in paragraph IV litigation involving ASACOL (mesalamine). Medeva had filed suit against Par for infringement of only one of two Orange Book-listed patents. Par counterclaimed for a declaratory judgment of invalidity as to the other patent, seeking to trigger forfeiture of the first ANDA filer's 180–day exclusivity. Medeva then offered a covenant not to sue, after which the district court dismissed Par's declaratory judgment claim. Click here for FDA Law Blog's excellent summary of the district court's decision.
After dismissing Par's declaratory judgment claim, the district court entered judgment under Rule 54(b), allowing Par immediately to appeal the decision. According to the district court, if the decision were to be reversed on appeal, then the court could possibly try the claims on both patents at the same time, because the issues involving the first patent were still in discovery.
Rule 54(b) permits a district court “to direct the entry of a final judgment as to one or more but fewer than all of the claims or parties only upon an express determination that there is no just reason for delay and upon an express direction for the entry of judgment.” In today's Order, the Federal Circuit stated that its task was “only to assess whether the movant can establish the district court abused its discretion in finding the final claim should be heard now as opposed to waiting until all claims against all parties have been entered.” The court concluded:
Medeva cannot meet this standard. The trial court appears to have considered both parties' arguments, and provided a thorough explanation for why judicial resources could be conserved if judgment was entered pursuant to Rule 54(b). Because the court cannot say the district court abused its discretion, we deny the motion to dismiss.
Accordingly, Par's appeal will go forward, and the Federal Circuit will consider whether the district court properly dismissed Par's declaratory judgment claim against Medeva.