Merck Sharp & Dohme Corp. v. Watson Laboratories, Inc. et al.
settled- Docket:
- 1:19-cv-00317-RGA
- Filed:
- 2019-02-13
Action asserting the '708 patent; settled. Teva/Watson nonetheless petitioned for IPR.
Defendant
11 cases as defendant.
Watson Laboratories, Inc. is a U.S. generic-drug manufacturer, incorporated in 1985 as the operating entity founded by Allen Chao and David Hsia (the business launched in 1984 as Watson Pharmaceuticals). Its original corporate headquarters were in Corona, California; corporate offices later moved to Parsippany, New Jersey. Watson is no longer independent: after merging with Actavis (2012) and renaming itself Actavis, Inc. (2013), it passed through Actavis plc/Allergan plc and was sold to Teva Pharmaceutical Industries Ltd. (NYSE/TASE: TEVA) in the 2016 Allergan generics deal. Court filings and Rule 7.1 disclosures confirm Watson Laboratories is an indirect wholly-owned Teva subsidiary, with principal executive offices at 400 Interpace Parkway, Parsippany, NJ. No standalone employee or revenue figures are published today; historical filings put Watson at roughly 5,600 employees and ~$2.5B revenue (2007), third- to fifth-largest U.S. generic manufacturer at the time.
Operations. Watson develops, manufactures and markets generic (off-patent) prescription pharmaceuticals via abbreviated new drug applications (ANDAs) — oral solids, transdermal patches, and one of the industry's larger generic oral-contraceptive lines — alongside a smaller branded portfolio (e.g., Oxytrol, Androderm, Ferrlecit) and the Anda distribution business. Manufacturing and R&D sites have included Corona, CA; Salt Lake City, UT; and Davie, FL. It is an operating company, not an NPE.
Litigation posture. The tracked dockets show a classic two-way ANDA litigant: as defendant in Merck Sharp & Dohme Corp. v. Watson Laboratories, Inc. et al. (D. Del., 1:19-cv-00317, filed Feb. 2019, terminated Nov. 2020), and as co-petitioner with Teva in the parallel PTAB proceeding against Merck. Suits are in the District of Delaware, not an NPE-style plaintiff venue, and Watson has never appeared as a volume patent plaintiff.
Context. The Merck dispute centered on Orange Book patents covering sitagliptin phosphate (Januvia); Teva/Watson's PTAB petition challenged the '708 patent as a "me-too" filing following Mylan's instituted IPR. Watson has also been a frequent defendant in Hatch-Waxman suits (e.g., UCB, Indivior/Suboxone, Bayer vardenafil, Sanofi) and, separately, a defendant in opioid-related public-nuisance and antitrust matters naming former Actavis/Teva entities.
Action asserting the '708 patent; settled. Teva/Watson nonetheless petitioned for IPR.
Jazz sued Watson Laboratories in D.N.J. involving the '106 patent. The case was closed and later settled.
Celgene asserted U.S. 7,977,357 against Natco, Arrow, and Watson in a REVLIMID ANDA litigation. The case settled and a consent judgment entered Jan. 4, 2016 dismissed claims with prejudice and enjoined Natco from generic lenalidomide except under license. The May 27, 2014 Markman opinion in the Natco litigation also construed 'Form A' for the '357 and '598 patents.
Celgene asserted multiple patents, including the '554 patent, against Natco's lenalidomide ANDA No. 201452. The '554 claims were dismissed without prejudice by stipulation on March 26, 2015; the overall case settled with a consent judgment entered January 4, 2016, and terminated January 5, 2016.
Celgene asserted US 6,561,976 as an asserted 'Celgene Patent' in an ANDA/Hatch-Waxman suit against Natco and others over generic THALOMID/REVLIMID. A May 7, 2014 stipulation recorded Natco's non-contest of infringement of certain claims of the ’976 patent. The case settled, and the docket terminated on Jan. 5, 2016.
Celgene brought this ANDA patent-infringement suit against Natco, Arrow, and Watson. The '717 patent was added by Fifth Amended Complaint on May 6, 2013, and the case settled on December 22, 2015, with a license to market generic lenalidomide beginning January 31, 2026; the docket terminated January 5, 2016.
Jazz Pharmaceuticals filed a D.N.J. ANDA action against Watson Laboratories concerning ANDA No. 204952. The case was consolidated into No. 2:13-cv-00391, with the '988 patent among the patents-in-suit.
D.N.J. Xyrem ANDA action against Watson, consolidated with the Ranbaxy and Amneal Xyrem actions for a 500 mg/ml generic sodium oxybate oral solution. The narrative identifies it among the Hatch-Waxman suits filed by Jazz on US 6,780,889; it was resolved/terminated in the 2015-2018 window.
Related Watson action listed on the '219 Google Patents litigation page and consolidated; settled pre-trial.
The '275 patent appears in the list of patents-in-suit recited in the consolidated D.N.J. Watson pleadings; resolved by settlement. Consolidated with 14-6151 and 15-187.
Filed after Watson's Oct. 29, 2014 Paragraph IV notice regarding ANDA No. 204952 (500 mg/mL sodium oxybate). The complaint names the '650 patent as a patent-in-suit; settled.