Last Updated: August 2, 2026

Litigation Details for SUMITOMO DAINIPPON PHARMA CO., LTD. v. PIRAMAL HEALTHCARE UK LIMITED (D.N.J. 2018)


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SUMITOMO DAINIPPON PHARMA CO., LTD. v. PIRAMAL HEALTHCARE UK LIMITED (D.N.J. 2018)

Docket 2:18-cv-13478 Date Filed 2018-08-31
Court District Court, D. New Jersey Date Terminated 2019-11-25
Cause 35:271 Patent Infringement Assigned To Stanley R. Chesler
Jury Demand None Referred To Cathy L. Waldor
Parties SUNOVION PHARMACEUTICALS INC.
Patents 8,729,085; 8,883,794; 9,174,975; 9,259,423; 9,555,027; 9,815,827; 9,827,242; 9,907,794
Attorneys REBEKAH R. CONROY
Firms Stone Conroy LLC
Link to Docket External link to docket
Small Molecule Drugs cited in SUMITOMO DAINIPPON PHARMA CO., LTD. v. PIRAMAL HEALTHCARE UK LIMITED
The small molecule drug covered by the patents cited in this case is ⤷  Start Trial .

Details for SUMITOMO DAINIPPON PHARMA CO., LTD. v. PIRAMAL HEALTHCARE UK LIMITED (D.N.J. 2018)

Date Filed Document No. Description Snippet Link To Document
2018-08-31 External link to document
2018-08-31 1 Complaint FDA ten patents for Latuda®. The listed patents are U.S. Patent Nos. 5,532,372, 8,729,085, 8,883,794…United States Patent Nos. 9,815,827 (the “’827 patent”) and 9,907,794 (the “’794 patent”) (collectively…the ’827 patent is attached hereto as Exhibit A. A true and accurate copy of the ’794 patent is attached… U.S. Patent No. 9,815,827 25. The ’827 patent, entitled “Agent for Treatment… ’827 patent. 27. Plaintiff Sunovion is the exclusive licensee to the ’827 patent in the External link to document
>Date Filed >Document No. >Description >Snippet >Link To Document

Litigation Summary and Analysis: Sumitomo Dainippon Pharma Co., Ltd. v. Piramal Healthcare UK Limited (2:18-cv-13478)

Last updated: July 17, 2026

Executive summary: In Sumitomo Dainippon Pharma Co., Ltd. v. Piramal Healthcare UK Limited, No. 2:18-cv-13478 (E.D. Mich.), Sumitomo Dainippon Pharma (SDP) sued Piramal Healthcare UK over alleged patent infringement tied to an FDA-regulated product. The case sits in the U.S. Hatch-Waxman workflow, with the core dispute framed around whether Piramal’s ANDA-related activity infringed asserted SDP patents and whether those patents were valid and enforceable. Procedural posture, claim construction outcomes, and the final merits disposition must be anchored to docket entries and court orders; without those docket-specific facts, a complete, litigation-grade summary cannot be produced.

What claims and patents were asserted in Sumitomo Dainippon v. Piramal (2:18-cv-13478)?

Answer: A litigation-grade answer requires the specific asserted patent numbers, the asserted claims, and the infringement theories (direct, induced, or contributory), all of which are not contained in the prompt.

Which SDP patents were listed as “asserted patents” in the complaint?

Key items typically required for this section:

  • Patent numbers (USPTO publication/patent IDs)
  • Asserted claims by number
  • Alleged infringement acts (making, using, offering for sale, selling, importing)
  • ANDA submission linkage (often via Orange Book/ANDA Paragraph IV statement)

How did SDP plead infringement and remedies?

Typical pleadings include:

  • Literal infringement vs. equivalents
  • Method-of-use vs. composition vs. formulation coverage
  • Requested relief (injunction, damages, attorneys’ fees under 35 U.S.C. § 285)

What was the procedural posture in 2:18-cv-13478, and when were key motions decided?

Answer: Procedural posture depends on docket timing and order dates, which are not provided.

What happened after filing in 2018?

Items that must be verified from the docket:

  • Complaint filing date and initial service
  • Scheduling order entry (claim construction deadline, discovery cutoffs)
  • Motion to dismiss (if any) and disposition date
  • Infringement contentions and invalidity contentions deadlines
  • Claim construction hearing and order date

Did the court issue a claim construction (Markman) order?

Claim construction is often outcome-determinative. A complete analysis requires:

  • The construed terms
  • Whether constructions aligned with SDP or Piramal
  • Downstream impact on infringement and invalidity

How did Piramal Healthcare UK respond in the case? (Noninfringement, invalidity, defenses)

Answer: A defense analysis requires the specific defenses and their legal bases, including which invalidity grounds were asserted and how.

What invalidity theories were pleaded?

Common grounds in Hatch-Waxman patent suits:

  • 35 U.S.C. §§ 102 and 103 (anticipation and obviousness)
  • 35 U.S.C. § 112 (written description and enablement, indefiniteness)
  • Lack of novelty over specific prior art references
  • Obviousness combinations and motivation to combine

What noninfringement arguments were used?

Typical noninfringement themes:

  • Structural or compositional differences (for formulations)
  • Process differences (for manufacturing methods)
  • Off-by-one interpretation of claim limitations after claim construction
  • No performance of method steps for method-of-use claims

What is the Hatch-Waxman linkage: ANDA, Paragraph IV, and timing effects?

Answer: A complete linkage analysis requires:

  • The ANDA number(s) and filer identity
  • The Orange Book listing(s) implicated by the Paragraph IV certification
  • The patent expiry and regulatory timelines relevant to the injunction risk

Did the case involve Paragraph IV or other certifications?

A litigation-grade summary must tie:

  • SDP’s asserted patents to the ANDA certification(s)
  • The stated basis for invalidity/noninfringement
  • Any “97” or “expiry” certification timing disputes

Were there FDA-related events that changed the litigation posture?

These include:

  • FDA acceptance/approval of ANDA
  • Amendments to certification
  • Stay motions under 21 U.S.C. § 355(j) and case management orders

What settlement, consent judgment, or stipulations occurred in 2:18-cv-13478?

Answer: Settlement posture cannot be stated from the prompt. A correct answer requires:

  • Existence of a settlement agreement
  • Whether the case was dismissed with prejudice
  • Entry of consent judgment and its terms (design-around, launch timing, royalty/consideration, covenant-not-to-sue scope)

Were there any dismissal orders or “joint stipulation” entries?

A complete litigation analysis normally includes:

  • Date and basis of dismissal (stipulated vs. order after motion)
  • Whether dismissal covered all claims and all asserted patents
  • Any reservation of rights provisions

How strong was SDP’s patent position versus Piramal’s invalidity posture?

Answer: Strength comparisons require:

  • The court’s rulings on claim construction
  • Summary judgment decisions on infringement or invalidity
  • Trial outcomes (if any) or dispositive motion outcomes

What did the court decide on infringement and validity (if it issued merits rulings)?

This needs docket-anchored answers for:

  • Direct infringement findings (or failure to prove)
  • Validity determinations (novelty/obviousness under §§ 102/103)
  • § 112 rulings

What were the risk-adjusted outcomes for launch?

A credible risk analysis needs:

  • Any injunction scope (preliminary/permanent)
  • Whether a 30-month stay was triggered and how long it lasted
  • Post-decision launch dates

What generic launch risks existed for Piramal if SDP prevailed?

Answer: Launch risk is tied to any injunction or stay and to which patents were enjoined.

If an injunction issued, what scope would it cover?

Typically:

  • All infringing activities using the adjudicated product configuration
  • Importation, sale, and offer for sale
  • Time-limited covenants after licensing or settlement

How do design-arounds affect infringement analysis?

Any design-around would require:

  • Identified claim features
  • The redesigned process/formulation’s mapping to the claim limitations
  • Whether the court required equivalence or literal infringement

How does this case compare with other SDP patent litigations against generics?

Answer: A comparison requires knowledge of other SDP cases’ docket outcomes, asserted patents, and outcomes. None are included in the prompt.

Key facts table (docket essentials that must be sourced from the case file)

The following table is intentionally left blank because the necessary docket-specific facts are not provided in the prompt and cannot be reconstructed without risk of inaccuracy.

Field Required detail Status
Court District, division, judge Not provided
Parties Correct legal names and counsel Not provided
Case number Confirmed: 2:18-cv-13478 Provided
Filed date Complaint filing date Not provided
Asserted patents Patent numbers and claim lists Not provided
ANDA link ANDA number(s), Paragraph IV details Not provided
Key motions Dismissal, claim construction, summary judgment Not provided
Claim construction Claim terms and construed results Not provided
Trial Jury/trial dates or no-trial resolution Not provided
Final disposition Settlement, dismissal, judgment Not provided
Injunction Preliminary/permanent injunction status Not provided

Key Takeaways

  • A litigation-grade summary for 2:18-cv-13478 must be grounded in docket orders and filings that specify the asserted patents, claim constructions, and final disposition.
  • The prompt provides only the case caption and docket number, which is insufficient to produce an accurate litigation summary, analysis of strength, or launch-injunction risk assessment.

FAQs

  1. What patents did Sumitomo Dainippon assert in 2:18-cv-13478?
  2. What claim construction did the court issue in 2:18-cv-13478?
  3. Did Piramal file a Paragraph IV certification, and which Orange Book patents were implicated?
  4. Was the case resolved by settlement, dismissal, or merits judgment?
  5. What launch date outcomes followed from the case’s resolution?

References

  1. Federal court docket, Sumitomo Dainippon Pharma Co., Ltd. v. Piramal Healthcare UK Limited, No. 2:18-cv-13478.

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