SUPERNUS PHARMACEUTICALS, INC. v. ACTAVIS INC. et al
Filing
73
MEMORANDUM ORDER denying Defts' 58 Appeal Magistrate Judge Decision to District Court. Signed by Judge Renee Marie Bumb on 2/20/2014. (drw)
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[Docket No. 58]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE
SUPERNUS PHARMACEUTICALS, INC.,
Plaintiff,
v.
Civil No. 13-cv-4740 (RMB/JS)
MEMORANDUM ORDER
ACTAVIS, INC., et al.,
Defendants.
This matter comes before the Court upon the appeal of an Order
by Magistrate Judge Joel Schneider [Docket No. 57], which addressed
a dispute between the parties in the above-captioned matter regarding
the terms of the appropriate Discovery Confidentiality Order
(“DCO”).
In his Order, Judge Schneider set forth what must be
included in the DCO, which is to be prepared by the parties.
In their
moving papers [Docket No. 58], the Defendants contend that Judge
Schneider erred in his Order by:
1) ordering that the DCO shall permit access by one in-house
technical advisor and one in-house attorney; and
2) failing to require that the DCO contain a provision effecting
a patent prosecution bar.
This Court has appellate review over the orders of magistrate
judges pursuant to 28 U.S.C. § 636(b)(1)(A), Federal Rule of Civil
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Procedure 72(a), and Rule 72.1(c) of the Local Rules of the United
States District Court for the District of New Jersey.
Matters
referred to a magistrate judge pursuant to 28 U.S.C. § 636(b) are
subject to two standards of review: (1) a "clearly erroneous or
contrary to law" standard for non-dispositive matters, and (2) a de
novo standard for dispositive matters.
Nat'l Labor Relations Board
v. Frazier, 966 F.2d 812, 816 (3d Cir. 1992). Rulings on discovery,
like the one at issue in the present appeal, are considered
non-dispositive matters subject to the clearly erroneous standard
of review.
Jackson v. Chubb Corp., 45 Fed. Appx. 163, 166 n.7 (3d
Cir. 2002).
A ruling is clearly erroneous when, "although there is evidence
to support it, the reviewing Court on the entire evidence is left
with a definite and firm conviction that a mistake has been
committed."
United States v. United States Gypsum Co., 333 U.S. 364,
395 (1948).
As the party filing the appeal, the Defendants have the
burden of demonstrating that Judge Schneider’s decision was clearly
erroneous or contrary to law.
Montana v. County of Cape May Bd. of
Freeholders, 2013 U.S. Dist. LEXIS 151660, at *3 (D.N.J. Oct. 18,
2013).
First, with respect to Judge Schneider’s ruling that the DCO
shall permit access to one in-house technical advisor, the Court
finds that such a ruling is not contrary to law.
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Indeed both parties
have cited cases where access to a non-lawyer, in-house employee was
permitted.
See e.g., Defs.’ Br. at p. 11 citing Sun v. Novartis,
Civil No. 13-3542; Pl.s’ Br. at p. 7 Standard Space Platforms Corp.
v. United States, 35 Fed. Cl. 505, 509 (1996).
That being said, for the reasons set forth in the record, many
of the arguments presented by Defendants with respect to this issue,
specifically with respect to the identification of Dr. Vieira as a
technical advisor, will not be addressed by this Court as they are
not yet ripe.
As the parties represented at oral argument, the
proposed DCO contemplates that each party reserves the right to
object to disclosure to a particular individual.
These objections
are properly brought in the first instance before Judge Schneider
so that the risks of inadvertent disclosure or competitive use by
such individual may be addressed by him.
With respect to Judge Schneider’s ruling that the record
prevented him from ordering a prosecution bar at that time, this Court
finds that the appeal is premature.
As Judge Schneider held, the
decision in In re Deutsche Bank Trust Company Americas, 605 F. 3d
1373 (Fed. Cir. 2010), requires that “each case should be decided
based on the specific facts involved therein.”
Id. at 1379.
Contrary to the Defendants’ argument, In re Deutsche Bank does not
require that a prosecution bar must be entered in every patent case.
See id. at 1381 (“We therefore hold that a party seeking imposition
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of a patent prosecution bar must show that the information designated
to trigger the bar, the scope of activities prohibited by the bar,
the duration of the bar, and the subject matter covered by the bar
reasonably reflect the risk presented by the disclosure of
proprietary competitive information.”).
This Court does not read Judge Schneider’s Order to be that no
such prosecution bar will be entered here, but, rather, that on the
basis of the bare record before it, the Court could not yet order
such a bar, and he invited the parties to make further submissions.
Rather than making such submissions before Judge Schneider,
Defendants appear to do so before this Court.
See e.g., Pl.’s Br.
at 14 (raising the potential for post-issuance review of the patents
in suit - e.g., reexamination or inter partes review); February 18,
2014 Hearing Transcript at 33:16-34:21 & 42:17-20 (discussing
similar potential issues)).
This is not the proper forum.
As such,
the parties must present their arguments properly before Judge
Schneider.
Once the record is closed and Judge Schneider has ruled
on those arguments, this matter would then be ripe for appeal.
If
the parties have no further evidence to present to Judge Schneider
on this issue, that must be made clear to him.
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ACCORDINGLY, IT IS on this, the 20th day of February 2014, hereby
ORDERED that Defendants’ Appeal [Docket No. 58] is DENIED.
s/Renée Marie Bumb
RENÉE MARIE BUMB
UNITED STATES DISTRICT JUDGE
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