In a rare order on the sufficiency of contentions, Chief Judge Stark denied the defendant’s motion to compel supplemental infringement contentions. In Takeda Pharmaceutical Company Limited v. Teva Pharmaceuticals USA, Inc., C.A. No. 16-246-LPS (D. Del. Jan. 31, 2017), defendant Teva Pharmaceuticals USA, Inc. (“Teva”) claimed that the plaintiffs’ contentions failed to describe how its ANDA products satisfied the “two distinct components” requirement found in all claims of the patent-in-suit. Teva also argued that the plaintiffs should not need to take discovery (including any testing of Teva’s tablets) before identifying the basis for their infringement claims. The plaintiffs responded that they had presented an infringement theory and that Teva’s request was premature because it had not completed testing on Teva’s ANDA product samples, which were not publicly available and only recently produced. Ultimately, the Court denied the motion because the plaintiffs had “sufficiently identified [their] infringement theory” and had represented that they would supplement their infringement contentions once testing was completed.
Key Points: When product samples are available, the Court may find it most efficient to allow a plaintiff to test those samples before finalizing its infringement contentions.