By Memorandum Opinion entered by The Honorable Colm F. Connolly in Orexo AB et al. v. Actavis Elizabeth LLC et al., Civil Action No. 17-205-CFC (D.Del. December 11, 2019), the Court denied Plaintiffs’ Orexo AB and Orexo US, Inc. (collectively, “Orexo”) motion for a new trial, pursuant to Federal Rule of Civil Procedure 59(a), on the issues of infringement, willfulness and damages. Orexo had alleged that Defendants generic versions of the anti-opioid addiction drugs Suboxone® and Subutex® directly and indirectly infringe claim 2 of U.S. Patent No. 8,454,996 (“the ‘996 patent”). Following a five-day trial, the joint verdict form did not ask the jury whether Orexo had proven direct infringement and the jury found that Defendants did not induce or contribute to infringement. Accordingly, the Court entered judgment for Defendants. Id. at *1.

Thereafter, Orexo moved for a new trial arguing that a new trial was warranted because (1) Judge Connolly erred in precluding them from presenting during trial the fact that Judge Sue L. Robinson ruled in a prior patent case (the “Zubsolv® case”) that the ‘996 patent was not invalid and was infringed by the generic version of another anti-opioid addiction drug, and (2) Judge Connolly erroneously “excluded the introduction of Orexo’s patents and published patent applications (other than the ‘996 patent) and other publications.” Id. at *2.

After review and consideration of the record, the Court found that it did not err in either instance. Id. at *28. The Court explained that, with respect to its ruling to preclude Defendants from presenting evidence related to the Zubsolv® case, it made the determination under Federal Rule of Evidence 403 that the admission of such evidence would confuse the jury and unfairly prejudice Defendants. Id. at *5-28. In other words, the degree of unfair prejudice would significantly outweigh the probative value of such evidence. Id. With respect to its second ruling at issue, the Court explained that Defendants could only have known about disclosures in a publication if they were aware of the publication and it ruled during trial that any publication would have been admissible if it was established that a witness of Defendants was aware of the publication. Id. at *27. The Court found that Orexo failed to lay a proper foundation for the introduction of other publications. Id. at *27-28.

A copy of the Memorandum Opinion is attached.