Stay Will Continue in Depomed Patent Suit

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By Dana A. Elfin

Jan. 5 — In a win for Purdue Pharma LP, a federal court affirmed a magistrate judge's order staying Depomed Inc.'s patent litigation against Purdue over its top-selling painkiller OxyContin while a federal appeals court weighs in on the U.S. Patent and Trademark Office's decisions upholding the validity of certain Depomed patents (Depomed Inc. v. Purdue Pharma LP, 2016 BL 502, D.N.J., No. 3:13-cv-00571-MAS-TJB, not for publication 1/4/16).

Depomed sued Purdue for patent infringement in 2013 in New Jersey federal court, alleging that Purdue's OxyContin sales infringed certain Depomed patents. Specifically, Depomed alleged that OxyContin used time-release technology owned by Depomed and covered by its U.S. Patent Nos. 6,635,280 (the ‘280 patent) and 6,340,475 (the ‘475 patent).

In response, Purdue said it didn't infringe the patents and also alleged that all of the patents were invalid for obviousness-type double patenting.

While the suit was proceeding in the U.S. District Court for the District of New Jersey, Purdue asked the PTO's Patent Trial and Appeal Board to undertake inter partes review (IPR) of the ‘280 and ‘475 patents (12 PLIR 1427, 10/10/14). IPR review is a streamlined patent review process created by Congress that went into effect in 2012 as a quicker and cheaper alternative to district court litigation.

Pending the PTAB's review of the Depomed patents, Magistrate Judge Tonianne J. Bongiovanni stayed the federal court patent litigation. In July 2015, the PTAB issued final decisions confirming the validity of the ‘280 and ‘475 patents.

Purdue Appealed IPR

Subsequently, on Sept. 15, 2015, Purdue appealed the outcome of the IPR proceedings to the U.S. Court of Appeals for the Federal Circuit, and asked that the stay be continued pending the Federal Circuit's review of the PTAB's IPR determinations.

Meanwhile, Endo International Plc, which makes the painkiller Opana, had also asked the PTAB to review the same Depomed patents.

On Sept. 28, 2015, the PTAB issued final written decisions in Endo's IPR proceedings that again confirmed the validity of the asserted claims of Depomed's ‘280 and ‘475 patents.

Depomed then asked that the magistrate judge lift the stay in its litigation against Purdue after the PTAB issued its written decisions in the Endo IPR proceedings. Purdue opposed the request because of its pending appeal from the IPR decisions at the Federal Circuit.

Ruling for Purdue, Bongiovanni continued the stay pending the Federal Circuit consideration of Purdue's appeal from the IPR decisions, and Depomed appealed.

Court Affirms Magistrate Judge

In an unpublished decision, Judge Mary L. Cooper affirmed the magistrate's continuation of the stay, finding that Bongiovanni didn't err in deciding that a stay pending Federal Circuit review of the PTAB's determinations in the Purdue IPR proceedings was appropriate.

Cooper said Bongiovanni's decision that a stay would streamline the case and promote judicial economy wasn't clear error.

A court's discretion to grant a stay extends to those stays pending conclusion of a Patent and Trademark Office reexamination, Cooper wrote. “When a party brings an appeal in such patent matters, a court should await any orders issued by the Federal Circuit and the United States Supreme Court,” she said. “A stay of Depomed's infringement action pending Purdue's IPR appeals would not be an unusual result,” she wrote.

Oral argument at the Federal Circuit in Purdue's appeal of the PTAB's IPR decisions is scheduled for Feb. 4.

The firms of Kramer Levin Naftalis & Frankel LLP in New York and Robinson Miller LLC in Newark, N.J., represented Newark, Calif.-based Depomed.

The firms of Jones Day in New York and Connell Foley LLP in Newark, N.J., represented Stamford, Conn.-based Purdue Pharma.

To contact the reporter on this story: Dana A. Elfin in Washington at

To contact the editor responsible for this story: Brian Broderick at