Case 1:10-md-02200-GMS Document 293 Filed 06/26/12 Page 1 of 2 PageID #: 6081

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

)

IN RE: ARMODAFINIL PATENT LITIGATION )

MDL Docket No. 10-md-2200-GMS

ORDER

WHEREAS on November 23, 2011, the court conducted a telephonic discovery dispute hearing with the parties 1; WHEREAS after having heard the parties' positions and explanations regarding Cephalon's continued late production of discovery the court ruled that there would be no further depositions; WHEREAS based on these discovery abuses and the prejudice Cephalon caused the defendants, the court required the defendants to draft an order to preclude Cephalon from relying upon any secondary considerations of non-obviousness (the "Preclusion Order"); WHEREAS based on Cephalon's representation-after the preclusion ruling-that all of the late-produced documents were "commercial documents," the court offered a "sliver oflight" permitting Cephalon to later petition the court to narrow the order to rely upon certain documents for non-obviousness if it could be agreed that: (1) all such documents were timely produced during fact discovery; and (2) the defendants will not otherwise be prejudiced by Cepahlon's reliance upon such documents 2 ;

In this multi-district litigation, the plaintiffs are Cephalon, Inc., and Cephalon France (collectively "Cephalon"), and the defendants are Mylan Pharmaceuticals Inc., Watson Laboratories, Inc., Sandoz, Inc., Lupin Limited, Apotex Corp., and Apotex Inc. (collectively "the defendants"). 2 See Transcript of telephonic Hearing, November 23, 2011, D.I. 222, at 24-27.

Case 1:10-md-02200-GMS Document 293 Filed 06/26/12 Page 2 of 2 PageID #: 6082

WHEREAS on January 4, 2012, Cephalon filed a Motion to Narrow Order Regarding Secondary Considerations ofNon-Obviousness (D.I. 234), which has now been fully briefed by both sides; WHEREAS in consideration of the foregoing, the submitted briefing, further discussions at yesterday's pre-trial conference, and the relevant law, the court concludes that Cephalon has not provided a legitimate reason to lift or modify the Preclusion Order; IT IS HEREBY ORDERED that Cephalon's Motion to Narrow (D.I. 234) is DENIED?

Dated: June'\..( , 2012

GE

Cephalon asks the court to narrow its Preclusion Order to allow it to rely on "cJpying" and "long-felt need" as "non-commercial" secondary considerations. Cephalon contends that the defendants will not be prejudiced if the Preclusion Order is narrowed because "[a]ll documents upon which Cephalon seeks to rely for these secondary considerations were timely identified .... " (0.1. 234 at 1.) The defendants disagree, and point out that their main source of prejudice results from having been denied the opportunity to conduct full discovery on the issues implicated in any and all of the late-produced documents. The court agrees with the defendants. The defendants no longer have the benefit of the additional information that could have been developed and discovered during a proper examination of the late-produced documents, including through their use during depositions. It would be inherently unfair, and contrary to the purpose of, and reasoning behind, the Preclusion Order, to give Cephalon the unfair advantage of being able to rely upon cherry-picked secondary considerations of long-felt need and copying, while those documents potentially unfavorable to its position remain buried within its late production to the defendants. Obviousness is determined in light of all the circumstances surrounding the alleged invention. Therefore, even if Cephalon timely-produced some documents related to some secondary considerations, the defendants remain prejudiced because the late-produced documents may contain relevant information that the defendants could have relied upon to rebut the timely-produced materials. Furthermore, Cephalon has not sufficiently defined what it believes is, m is not, a "commercial document." As the defendants point out in their brief, many of the late-produced documents contain information relevant to the "technical" or "scientific" considerations of non-obviousness. (D.I. 246 at 9.) Cephalon also requests that the court confirm that its Preclusion Order does not prevent it from relying on evidence with respect to other issues in this case, such as infringement (now out ofthe case) andprimafacie obviousness. The court agrees with the defendants that the Preclusion Order is unambiguous on its face and requires no clarification. As was pointed out by the defendants during the continued discussion of this issue during yesterday's pre-trial conference, the matter was fully aired (some twenty pages of transcript) back in November, and no new information has come to light since then. The court previously ruled that Cephalon is precluded from relying on any evidence of secondary considerations and now declines to alter or narrow that ruling.