IP Verse

Eagle Pharmaceuticals, Inc. V. Slayback Pharma Llc - 1:24-cv-00065

Eagle Pharmaceuticals, Inc. V. Slayback Pharma Llc (Case No. 1:24-cv-00065), filed on Jan 17, 2024 in the District Court, D. Delaware involving patent infringement. This case involves patent infringement claims between the parties. Explore details about the litigants, key filings, and major docket updates.

Case Details

Case Number
1:24-cv-00065
Filing Date
Jan 17, 2024
Cause of Action
Patent Infringement
Status
-
Court
District Court, D. Delaware
Nature of Suit
Patent

Parties Involved

The following parties are involved in this case, with their respective legal representatives for the case.

NameRepresented By
Slayback Pharma LLC -
Eagle Pharmaceuticals, Inc. -

Patents Involved

There is a single patent involved in this case.

Application NumberPatent Number
-US12138248B2

Docket Entries

The Docket Entries section provides a chronological list of all significant filings and court actions in this case.

DateDocket EntryType

Set alerts for critical docket entry

Jul 8, 2025ANSWER to Amended Complaint, re: [150] Amended Complaint with Jury Demand by Azurity Pharmaceuticals, Inc., Slayback Pharma LLC.(Taylor, Daniel)PACER Document
Jul 10, 2025Pro Hac Vice Attorney Alan H. Pollack for Azurity Pharmaceuticals, Inc. & Slayback Pharma LLC added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (slk)PACER Document
Jul 10, 2025ORAL ORDER: The Court has reviewed Defendants' Motion for Teleconference to Resolve Discovery Disputes, ("Motion"), filed in these three related actions, (Civil Action No. 24-64-JLH (hereafter, the docket the Court will cite to unless otherwise noted), D.I. 125; Civil Action No. 24-65-JLH, D.I. 106; Civil Action No. 24-66-JLH, D.I. 99), the briefing related thereto, (D.I. 145; D.I. 151; D.I. 155), and has held a videoconference hearing regarding the Motion on July 7, 2025. Three discovery disputes were raised in the Motion briefing; the Court resolved one orally during the hearing, and hereby ORDERS as follows regarding the remaining two disputes: (1) With regard to Defendants' request that the Court order Plaintiff to search for and produce documents related to the role of sodium hydroxide in Plaintiff's bendamustine products, the Court GRANTS-IN-PART and DENIES-IN-PART the request, in that it ORDERS that Plaintiff must conduct a reasonable search for and produce documents that pertain to "whether [Plaintiff] considers sodium hydroxide part of the 'pharmaceutically acceptable fluid' of its [liquid bendamustine] formulations[,]" (D.I. 145 at 2), or "whether sodium hydroxide [is] incorporated into the fluid of [Plaintiff's] liquid bendamustine formulations[,]" (D.I. 155 at 1). For the reasons Defendants articulated in their briefing and during the hearing, documents that bear on that particular subject matter may be relevant to issues regarding, inter alia, lost profits, commercial success, and even possibly to the infringement inquiry in this case. (D.I. 145 at 1-2; id., ex. 4, col. 14:2-9; D.I. 155 at 1; D.I. 177 at ¶¶ 29-30, 34-35); see also Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1288 (Fed. Cir. 2010) (noting that "[o]ur case law does not contain a blanket prohibition against comparing the accused product to a commercial embodiment" and that "when a commercial product meets all of the claim limitations, then a comparison to that product may support a finding of infringement"); TEK Glob., S.R.L. v. Sealant Sys. Int'l, Inc., 920 F.3d 777, 788 (Fed. Cir. 2019) (same). Moreover, the record is not sufficient for the Court to agree with Plaintiff's assertion that any documents uncovered as part of this search would necessarily be cumulative to what has already been produced in this litigation, or would necessitate searching that is "not proportional to the needs of this case." (D.I. 151 at 1-2) The Court has no great record before it that would go to the issue of proportionality. And, although Plaintiff may have previously produced documents relating to sodium hydroxide (primarily as part of a re-production of documents from prior litigation), (id.), it is undisputed that it has not made a particular attempt in this case to search for documents responsive to the relevant request for production at issue here, (D.I. 145 at 2; D.I. 155 at 1). It should be required to make such an attempt. See, e.g., Azurity Pharms., Inc. v. Bionpharma Inc., Civil Action No. 21-1286-MSG, D.I. 489 at 3 (D. Del. Mar. 18, 2024).; (2) With regard to Defendants' request that the Court order Plaintiff to produce documents and communications related to Plaintiff's 2025 royalty purchase agreement ("agreement"), the Court GRANTS-IN-PART and DENIES-IN-PART the request, in that it ORDERS that Plaintiff must conduct a reasonable search for and produce documents and communications related to the agreement—to the extent such documents/communications include content relating in some way to the value of the patents-in-suit. There is no dispute that the executed deal documents for the agreement and the underlying repayment model pertaining thereto should all be produced, as they are relevant to damages issues. (D.I. 151 at 3) And, in the Court's view, the type of evidence described above—even were it to be found in draft documents or relate to figures different than what ended up in the final agreement—could well still be relevant to damages, as it could amount to helpful data points bearing on how one might reasonably assign value to these patents (something that is often difficult to determine). See Robocast, Inc. v. Netflix, Inc., Civil Action No. 22-305-JLH, D.I. 342 at 155-57 (D. Del. Sept. 5, 2024); id., D.I. 449 at 2-3 (D. Del. Jan. 8, 2025); see also In re MSTG, Inc., 675 F.3d 1337, 1348 (Fed. Cir. 2012); Eagle View Techs., Inc. v. Nearmap US, Inc., Case No. 2:21-cv-00283, 2024 WL 693714, at 2 (D. Utah Feb. 20, 2024); Kajeet, Inc. v. Qustodio, LLC, Case No.: SA CV 18-1519-JAK (PLAx), 2019 WL 8060078, at 8 (C.D. Cal. Oct. 22, 2019); Charles E. Hill & Assocs., Inc. v. ABT Elecs., Inc., 854 F. Supp. 2d 427, 430 (E.D. Tex. 2012).; and (3) At this time, the Court declines to micromanage or further define the parameters of what would constitute a reasonable search for the above-referenced types of documents—such as by deciding which or how many custodians' documents much be searched, or what search strings must be used, or the like. (D.I. 151 at 2) At the hearing, it was clear that the parties did not sufficiently meet and confer as to those "scope" issues in the past; they will be required to do so here, in order to try to reach agreement on the extent of Plaintiff's future searching. See also Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI"), at ¶ 1(b) ("Parties are expected to use reasonable, good faith and proportional efforts to…identify[] appropriate limits to discovery[.]"). Ordered by Judge Christopher J. Burke on 07/10/2025. Associated Cases: 1:24-cv-00064-JLH, 1:24-cv-00065-JLH, 1:24-cv-00066-JLH(sam)PACER Document
Jul 23, 2025NOTICE OF SERVICE of Defendant Slayback Pharma LLC's Third Supplemental Initial Disclosures Pursuant to Rule 26(a)(1) filed by Slayback Pharma LLC.(Taylor, Daniel)PACER Document
Jul 31, 2025NOTICE OF SERVICE of Plaintiffs' Objections and Responses to Defendants' First Set of Common Requests for Admission to Plaintiff Eagle Pharmaceuticals, Inc. filed by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC.(Joyce, Alexandra)PACER Document
Aug 1, 2025NOTICE OF SERVICE of Defendants Slayback Pharma LLC and Azurity Pharmaceuticals, Inc.'s Initial Invalidity Contentions for U.S. Patent No. 12,138,248 filed by Azurity Pharmaceuticals, Inc., Slayback Pharma LLC.(Taylor, Daniel)PACER Document
Aug 5, 2025NOTICE to Take Deposition of Ravindhar Gonti on a date and at a time to be agreed upon filed by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC.(Joyce, Alexandra)PACER Document
Aug 5, 2025NOTICE to Take Deposition of Sheila Bhattachara on a date and at a time to be agreed upon filed by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC.(Joyce, Alexandra)PACER Document
Aug 5, 2025NOTICE to Take Deposition of Harish Chinnari on a date and at a time to be agreed upon filed by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC.(Joyce, Alexandra)PACER Document
Aug 11, 2025MOTION for Pro Hac Vice Appearance of Attorney Brett Sandford - filed by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC. (Silver, Daniel)PACER Document
Aug 11, 2025Pro Hac Vice Fee - Credit Card Payment received for Brett Sandford. ( re [172] MOTION for Pro Hac Vice Appearance of Attorney Brett Sandford )( Payment of $ 50, receipt number ADEDC-4756462).(Silver, Daniel)PACER Document
Aug 11, 2025SO ORDERED, re (196 in 1:24-cv-00064-JLH, 172 in 1:24-cv-00065-JLH) Motion for Pro Hac Vice Appearance of Attorney Brett Sandford filed by Eagle Sub1 LLC, Eagle Pharmaceuticals, Inc. Ordered by Judge Jennifer L. Hall on 8/11/2025. Associated Cases: 1:24-cv-00064-JLH, 1:24-cv-00065-JLH(ceg)PACER Document
Aug 15, 2025Pro Hac Vice Attorney Brett M. Sandford for Eagle Pharmaceuticals, Inc. & Eagle Sub1 LLC added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (slk)PACER Document
Aug 15, 2025NOTICE of Subpoena to Apotex Inc. and Apotex Corp. by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC (Silver, Daniel)PACER Document
Aug 15, 2025NOTICE of Subpoena to Baxter Healthcare Corp. by Eagle Pharmaceuticals, Inc., Eagle Sub1 LLC (Silver, Daniel)PACER Document