United States District Court, S.D. Indiana, Indianapolis Division
ELI LILLY AND COMPANY, and LILLY INDUSTRIES LIMITED, Plaintiffs,
ZENITH GOLDLINE PHARMACEUTICALS, INC., DR. REDDY'S LABORATORIES, INC., and TEVA PHARMACEUTICALS USA, INC., Defendants.
ENTRY ON PLAINTIFFS' MOTION TO REOPEN
RICHARD L. YOUNG, JUDGE
9, 2005, the court issued its Amended Final Judgment and
Order in favor of the Plaintiffs, Eli Lilly and Company and
Lilly Industries Limited (collectively “Lilly”),
and against the Defendants, Dr. Reddy's Laboratories,
Ltd. (“DRL”) and Teva Pharmaceuticals USA, Inc.
“Defendants”). Specifically, the court held that
Lilly's U.S. Patent No. 5, 229, 382, which claims,
inter alia, the chemical compound known as
olanzapine, was valid and enforceable. The court also issued
a permanent injunction against the Defendants, enjoining them
from “infringing, contributing to, or inducing
infringement of the ‘382 patent before its expiration
[in 2011], including making, using, selling, offering for
sale, or importing olanzapine.” (Filing No. 33, Amended
9, 2016, during a trial in the Federal Court of Canada
between Teva Canada Limited and Eli Lilly
Canada, Inc. et al. over Lilly's Canadian olanzapine
patent, Mr. Rajesh Sadanandan of DRL testified regarding an
invoice and packing slip issued from DRL's sales
department in Bridgeport, New Jersey. (Filing No. 84-2,
Testimony of Rajesh Sadanandan (“Sadanandan
Test.”) at 785, 792). These documents, dated September
11, 2006, reflect a sale of 15, 000 kg. of olanzapine to
Novopharm Limited (now Teva) in Ontario, Canada. (Filing No.
115-7, Invoice and Packing Slip). Although Mr. Sadanandan
acknowledged that the invoice and packing slip would
accompany the product when it is shipped, he could not verify
where the olanzapine was shipped from without the Air
Waybill. (Sadanandan Test. at 789). “Most of the time,
” he said, “the product [sic] manufactured in
India, so the product gets shipped from India directly to the
customer's site. It is only the invoicing that happens in
the U.S. office.” (Id.). Upon further
questioning, he was forced to acknowledge that some orders
are invoiced from India. (Id. at 790). The salient
testimony is as follows:
Q: You would agree with me that Dr. Reddy's sometimes
would issue issues [sic] out of India and sometimes out of
A: Yes, sir.
Q: Do you wish to correct the previous statement they were
always issued out of Bridgewater regardless of where they
were shipped from?
A: Yes. You are right in that sense, but I need to explain
that. The thing is these quantities which are being supplied
is for the commercial lots. When it get to commercial and if
in that country you are not allowed to send commercially from
that market, we invoice it out of India.
Q: But you did invoice in 2006 out of the U.S., did you not?
A: Yes. That was only for developmental purpose [sic].
Q: No, it wasn't, sir. The evidence here is that material
was sold commercially. It is the evidence of Teva. Do you
wish to dispute that? Or did Teva breach some agreement you
had with them?
A: I am not aware of that.
Sadanandan's testimony also raises an inference that, in
addition to the September 11, 2006 invoice and packing slip
addressed above, other invoices and packing slips were issued
out of the sales department of DRL's office in
Bridgewater, New Jersey, indicating sales of olanzapine that
were made to Teva by DRL. (Id. at 785, 792
(“Q: Who would have issued those invoices in
Bridgewater, New Jersey, in 2006? A: I would not know,
sir.”); see also Affidavit of Anthony G.
Creber ¶ 21) (noting other invoices and packing slips
were admitted during the Canadian trial). And, despite being
an employee of DRL responsible for sales in North America, he
was unaware of this court's May 9, 2005 Order and did not
change his business practices as a result of the Order.
(Sadanandan Test. at 785-88, 791-92). Based on this
testimony, Plaintiffs filed the present motion to reopen
these proceedings and institute a civil contempt action
against the Defendants for the sale of olanzapine in the
United States during the life of the ‘382 patent.
DRL's Response, it submitted the Air Waybill which was
not before Mr. Sadanandan. (See Filing No. 115-9,
Air Waybill). It shows the shipper as “Dr. Reddy's
Laboratories Ltd.” from Andhra Pradesh, India, and the
consigner as “Novopharm Ltd.” from Ontario
Canada. (Id.). Both Teva and DRL argue, inter
alia, that (1) the Air Waybill is conclusive proof that
no sale of olanzapine occurred in ...