IN RE APOTEX, INC. and APOTEX CORP v. U. S. Dist. Court for S. Dist. of Iowa, 490 U.S. 296, 309 1989

NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

IN RE APOTEX, INC. and APOTEX CORP.,
Petitioners.

Miscellaneous Docket No. 941

On Petition for Writ of Mandamus to the United
States District Court for the District of New Jersey in
consolidated case nos. 07-CV-4417, 08-CV-3065, and 08-
CV-4053, Judge Stanley R. Chesler.

## ON PETITION FOR WRIT OF MANDAMUS

Before NEWMAN, SCHALL, and PROST, Circuit Judges.
NEWMAN, Circuit Judge.

## ORDER

Apotex, Inc. and Apotex Corp. (Apotex) petitions for a
writ of mandamus directing the United States District
Court for the District of New Jersey to enter judgment in
favor of Apotex and against Hoffman-LaRoche, Inc. (La-
Roche) on all LaRoche's claims related to U.S. Patent No.
4,927,814. LaRoche opposes. Apotex replies.0

Apotex filed an Abbreviated New Drug Application
(ANDA) in 2007 with the United States Food and Drug

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Administration seeking approval to market a generic
version of LaRoche's osteoporosis drug Boniva. LaRoche
subsequently sued Apotex for patent infringement. The
district court's deadline for amending pleadings in La-
Roche's suit expired on August 29, 2008 and discovery
closed on June 26, 2009. On July 28, 2009, Apotex dis-
closed for the first time that it intended to assert a de-
fense of patent expiration due to alleged terminal
disclaimer and failure to pay a maintenance fee for an-
other patent. The district court granted LaRoche's re-
quest to preclude Apotex from raising this defense,
because Apotex had been aware of the defense since April
of 2009 and failed to disclose the defense prior to the
closing of fact discovery closing. Apotex now seeks a writ
of mandamus, not only to direct that the district court
allow it to assert the defense but also to direct the district
court to grant judgment in its favor on the defense.

The remedy of mandamus is available only in extraor-
dinary situations to correct a clear abuse of discretion or
usurpation of judicial power. In re Calmar, Inc., 854 F.2d
461, 464 (Fed. Cir. 1988). A party seeking a writ bears the
burden of proving that it has no other means of attaining
the relief desired, Mallard v. U. S. Dist. Court for S. Dist.
of Iowa, 490 U.S. 296, 309 (1989), and that the right to
issuance of the writ is "clear and indisputable," Allied
Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). A
court may deny mandamus relief "even though on normal
appeal, a court might find reversible error." In re Cordis
Corp., 769 F.2d 733, 737 (Fed. Cir. 1985); see also United
States v. Watson, 603 F.2d 192, 196-97 (C.C.P.A. 1979)
("the writ will not issue to cure the mere commission of
reversible error"). "That a petitioner may suffer hardship,
inconvenience, or an unusually complex trial does not
provide a basis for a court to grant mandamus." In re
Roche Molecular Sys., Inc., 516 F.3d 1003, 1004 (Fed. Cir.
2008) (citing Watson, 603 F.2d at 195).

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We determine that Apotex has not shown that it has
no other means of obtaining the relief requested. Specifi-
cally; Apotex has not shown that it cannot obtain ade-
quate relief on appeal after final judgment. Thus, Apotex
has not met its burden to obtain a writ of mandamus.

Accordingly,
IT IS ORDERED THAT:
The petition is denied.

FOR THE COURT

JUL 02 2010

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Steven E. Feldman, Esq.
Mark E. Waddell, Esq.
Clerk, United States District Court For The District
Of New Jersey

$20

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
JUL 02 2010

JAN HORBALY
CLERK