Mylan Inc. v. Smithkline Beecham Corp. , 723 F.3d 413 ( 2013 )

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
________________
No. 12-1539
________________
MYLAN INC.; MYLAN PHARMACEUTICALS INC.,
Appellants
v.
SMITHKLINE BEECHAM CORPORATION, n/k/a
GLAXOSMITHKLINE LLC, d/b/a GLAXOSMITHKLINE;
SMITHKLINE BEECHAM P.L.C., n/k/a SMITHKLINE
BEECHAM, LIMITED; SMITHKLINE BEECHMAN
(CORK) LIMITED, successor to SB PHARMCO PUERTO
RICO, INC.; APOTEX INC; and APOTEX CORPORATION
________________
Appeal from the United States District Court
for the District of New Jersey
(D.C. Civil Action No. 3-10-cv-04809)
District Judge: Honorable Joel A. Pisano
________________
Argued: January 8, 2013
Before: SCIRICA, AMBRO, and FUENTES, Circuit Judges
(Opinion filed: July 22, 2013)
1
Gary D. Adamson, Esquire
Michael E. Johnson, Esquire (Argued)
Alston & Bird
90 Park Avenue, 12th Floor
New York, NY 10016-1387
Counsel for Appellants
William H. Burgess, Esquire
F. Christopher Mizzo, Esquire (Argued)
Michael A. Pearson, Esquire
Kirkland & Ellis
655 15th Street, N.W., Suite 1200
Washington, DC 20005
Thomas A. Cunniff, Esquire
Fox Rothschild
997 Lenox Drive
Princeton Pike Corporate Center, Building 3
Lawrenceville, NJ 08648
Eric I. Abraham, Esquire (Argued)
Christina L. Saveriano, Esquire
Hill Wallack
202 Carnegie Center, 2nd Floor
Princeton, NJ 08543
Counsel for Appellees
________________
OPINION OF THE COURT
________________
2
AMBRO, Circuit Judge
This case involves competing rights over the
pharmaceutical paroxetine hydrochloride controlled release
tablets (―paroxetine‖) in generic form. Defendant/Appellee
GSK1 holds patent and FDA rights to market and sell
paroxetine for the treatment of depression under the brand
name Paxil CR.2 As part of a 2007 settlement agreement,
GSK granted Plaintiff/Appellant ―Mylan‖ (jointly and
severally referring to Mylan Inc. and Mylan Pharmaceuticals
Inc.) certain rights to produce, market, and sell generic
paroxetine. Then, in 2010, GSK agreed—as part of an
unrelated settlement—to begin supplying Defendant/Appellee
―Apotex‖ (jointly and severally referring to Apotex Inc. and
Apotex Corp.) with GSK-produced generic paroxetine for
marketing and sale to downstream customers. Mylan filed
suit against GSK and Apotex, claiming the 2010 agreement
1
―GSK‖ refers collectively to SmithKline Beecham
Corp., n/k/a GlaxoSmithKline LLC, d/b/a GlaxoSmithKline;
SmithKline Beecham P.L.C., n/k/a SmithKline Beecham,
Ltd.; and SmithKline Beecham (Cork) Ltd., successor to SB
Pharmco Puerto Rico, Inc.
2
GSK maintains patent rights under U.S. Patent No.
7,229,640 (expires July 2016), and is authorized to market
and sell paroxetine pursuant to FDA-approved New Drug
Application (―NDA‖) No. 02-0936. An NDA must provide,
inter alia, ―a statement of the drug‘s components, scientific
data showing that the drug is safe and effective, and proposed
labeling describing the uses for which the drug may be
marketed.‖ Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S,
132 S. Ct. 1670, 1676 (2012).
3
violated its licensing agreement with GSK, which did not
permit GSK to provide its own form of generic paroxetine to
another generic drug company—such as Apotex—to be
marketed and sold in direct competition with Mylan.
The District Court found that the terms of the GSK-
Mylan agreement were unambiguous, and they did not limit
to whom GSK was permitted to market and sell its own
version of generic paroxetine. It thus held GSK did not
breach its agreement by agreeing to provide Apotex with
GSK-produced generic drugs, and granted summary judgment
against Mylan on all claims. For the reasons that follow, we
reverse the Court‘s grant of summary judgment on the
breach-of-contract cause of action against GSK, and remand
for the parties to proceed to trial on that claim. We affirm its
grant of summary judgment on all other claims. Because the
District Court denied GSK‘s motion to strike Mylan‘s expert
damages report as moot on the basis of its summary judgment
rulings, we will vacate that denial for reconsideration on
remand.3
3
The parties have moved to file under seal Volumes III
through VII of the Joint Appendix and unredacted versions of
their briefs, as well as to continue impoundment of the
portions of the certified record filed under seal in the District
Court. We are satisfied there is good cause to seal these
records—i.e., to protect the parties‘ confidential proprietary
business and competitive interests. See Littlejohn v. BIC
Corp., 851 F.2d 673, 678 (3d Cir. 1988) (citing Nixon v.
Warner Commc’ns, Inc., 435 U.S. 589, 598 (1978));
Publicker Indus., Inc. v. Cohen, 733 F.2d 1059, 1070–71 (3d
Cir. 1984). Thus, we grant the motions to seal and limit our
discussion to those underlying facts and evidence already
disclosed during the litigation and not under seal.
4
I. BACKGROUND
A. GSK-Mylan Patent Settlement & License
Agreement
In June 2007, GSK sued Mylan for patent infringement
after Mylan sought FDA approval to introduce a generic
version of paroxetine into the market before GSK‘s patent
had expired.4 The parties settled the case shortly thereafter,
4
Once a new pharmaceutical has been approved for
sale, there are two means by which a generic form of the drug
may be introduced into the market. First, a generic company
can file an Abbreviated New Drug Application (―ANDA‖),
which seeks FDA authorization to produce and sell a generic
version of an already approved drug product. See 21 U.S.C. §
355(j); 21 C.F.R. § 314.92–99. Second, the brand company
may produce an ―authorized generic‖ (―AG‖) under its
approved NDA, which is labeled as generic and sold at a
lower price than its branded equivalent, to compete with other
generic products on the market. See 21 U.S.C. § 355(t)(3).
An ANDA filer must certify that the generic drug will
not infringe on any patent covering the pioneer drug. One
way it may do this—as was done by Mylan here—is by
challenging the validity of the relevant patent via a
―Paragraph IV‖ certification. See id. § 355(j)(2)(A)(vii)(IV).
For a more thorough discussion of the patent obligations with
respect to generic applicants, see Abbreviated New Drug
Application Regulations; Patent Exclusivity Provisions, 59
Fed. Reg. 50,338 (Oct. 3, 1994) (codified at 21 C.F.R.
pt. 314). See also Mylan Pharm., Inc. v. Shalala, 81 F. Supp.
2d 30, 32–34 (D.D.C. 2000) (discussing the development of
5
signing a Patent License and Settlement Agreement in August
2007 (―License Agreement‖). Section II(c) of the License
Agreement granted Mylan exclusive rights to market and sell
generic paroxetine for the remaining life of GSK‘s patent
(i.e., nearly nine years of complete generic exclusivity). This
included manufacturing, marketing, and selling Mylan‘s own
generic paroxetine drug products, as well as sales rights for
AG paroxetine manufactured by GSK. Mylan‘s generic
rights were exclusive ―even [as] to GSK.‖ See J.A. at 51
(quoting License Agreement, Section II(c)).
The parties submitted to the Federal Trade
Commission (―FTC‖) the License Agreement, in accord with
its terms and as required by federal law. See Medicare
Prescription Drug, Improvement, and Modernization Act of
2003, Pub. L. No. 108-173, Title XI §§ 1112–13, 117 Stat.
2066, 2461–63 (codified at 21 U.S.C. § 355). In response to
concerns raised by the FTC about the length and absoluteness
of Mylan‘s exclusive generic rights, the parties amended the
License Agreement in September 2007 (the ―Second
Amendment‖; the First Amendment to the License
Agreement is irrelevant to this opinion). It provided two
specific exceptions to the complete generic exclusivity
provided under the License Agreement. First, in the
settlement of subsequent patent litigation with other third-
party companies that had filed ANDAs for generic
paroxetine, GSK was permitted to grant nonexclusive licenses
as part of a settlement agreement with those third parties:
If GSK receives a Third Party Notification and
GSK initiates an action for patent infringement,
GSK can enter into a settlement agreement with
generic drug-approval guidelines and ramifications of a
Paragraph IV certification).
6
respect to such action at any time and Mylan
agrees to waive its exclusivity under Section
II(c) in order to permit GSK under such
settlement agreement to grant such Third Party
a non-exclusive license under the GSK Patents
to sell Generic Paroxetine Product(s) in the
dosage form(s) specified in the Third Party‘s
ANDA . . . .
J.A. at 51 (quoting Second Amendment, Section II(e) para. a)
(the so-called ―ANDA Clause‖).
Second, and more relevant here, GSK (or a GSK
affiliate) was entitled to market and sell AG paroxetine
beginning two years after Mylan launched its generic
products:
Also, GSK or its Affiliate may commence
marketing and selling generic paroxetine
hydrochloride controlled or modified release
products pursuant to its Paxil® CR NDA
(―Authorized Generic Products‖) at the end of
the second year after Mylan launches its
Generic Paroxetine Products.
Id. (quoting Second Amendment, Section II(e) para. b) (the
―Authorized Generic Clause‖).
The Second Amendment alleviated the FTC‘s exclusivity-
related concerns. Thereafter, Mylan launched its generic
paroxetine drug products in May 2008.
B. GSK-Apotex Antitrust Litigation & Supply
Agreement
In May 2010, GSK settled an unrelated antitrust
lawsuit brought against it by Apotex. The terms of the
7
settlement agreement provided for a $300 million cash
payment to Apotex; in addition, Apotex was entitled to a
guaranteed minimum of $180 million to be earned through
the sale of GSK products (i.e., ―in-kind transfers‖). During
negotiations regarding the potential products GSK would
provide for the in-kind transfers, Apotex became aware that
Mylan (i) had certain licensing rights with respect to
paroxetine, for which Mylan paid GSK royalties, and (ii) was
the only generic paroxetine market participant. While it
refused Apotex‘s request for a copy of the License Agreement
due to confidentiality concerns, GSK did advise Apotex that
its supply obligation to Mylan ended by June 2010. See J.A.
at 8.
The parties agreed that one of the GSK-supplied
products from which Apotex would produce sales revenues
would be AG paroxetine. Thus, to implement the in-kind
transfer arrangement, GSK and Apotex subsequently entered
into an Exclusive Supply & Distribution Agreement for AG
paroxetine (―S&D Agreement‖). Id. Apotex subsequently
began sales activities for AG paroxetine, which led to the
filing by Mylan of this lawsuit in September 2010.
C. District Court Proceedings
Mylan brought claims against GSK for breach of
contract and the implied covenant of good faith and fair
dealing, and against Apotex for tortious interference with and
inducement to breach a contract. The crux of Mylan‘s claims
was that the terms of the amended License Agreement only
allowed third-party generic companies that had filed their
own ANDAs to sell generic paroxetine, and that, even after
Mylan‘s two-year exclusivity period, only GSK was
permitted to engage in marketing and sales activities for AG
paroxetine that were directed to downstream customers—e.g.,
―wholesalers, retailers, pharmacy chains, mail order
8
pharmacies, pharmacists, hospitals, clinics, and managed
market companies.‖ See Mylan Br. at 43. Mylan asserted
this was consistent with its position during negotiations—that
to allow otherwise would force it to compete against other
generic companies that were not required to expend the time
and resources to secure FDA approval by filing an ANDA.
Mylan thus argued that GSK violated the License Agreement
by entering into the S&D Agreement and supplying Apotex—
an intermediary drug company—with GSK-produced AG
paroxetine for marketing and sale in competition with
Mylan.5
The District Court granted summary judgment in favor
of GSK and Apotex. In doing so, it ruled that the Authorized
Generic Clause of the Second Amendment was clear and
unambiguous, thus permitting GSK to market and sell AG
paroxetine to whomever it wished, including Apotex, after
Mylan‘s two-year period of generic exclusivity. Hence the
Court declined to consider any of the intent evidence
submitted by the parties, as well as the industry and custom
evidence offered by Mylan, on the ground that such evidence
―cannot be used ‗to create an ambiguity where none exists‘ in
order to preclude summary judgment.‖ Id. at 13 (quoting
Int’l Union, UAW v. Skinner Engine Co., 188 F.3d 130, 145
(3d Cir. 1999)).
5
Apotex undisputedly did not come within the scope of
the ANDA Clause, as it never prepared an ANDA for generic
paroxetine, nor was it sued by GSK for infringing patents
purportedly covering paroxetine. And with respect to the
Authorized Generic Clause, Apotex is a ―Third Party‖ and not
a GSK affiliate as defined by the License Agreement.
9
The Court thus held GSK did not violate the License
Agreement or, in the absence of proof of bad motive, the
implied covenant of good faith and fair dealing. Because it
found no protectable contract right, the Court also held
Mylan‘s claims against Apotex necessarily failed; this meant
that GSK and Apotex were entitled to judgment as a matter of
law on all claims brought by Mylan.
On appeal, Mylan challenges the District Court‘s
interpretation of the Authorized Generic Clause and its
consequent grant of summary judgment in favor of (i) GSK
on Mylan‘s contractual claims, and (ii) Apotex with respect to
Mylan‘s tortious interference claim.6
II. DISCUSSION7
A. Standard of Review
Our review of the grant or denial of summary
judgment is plenary, and we ―apply[] the same standard as the
district court.‖ Tri-M Grp., LLC v. Sharp, 638 F.3d 406, 415
6
Mylan does not raise on appeal its inducement to
breach claim against Apotex; thus, the issue is waived. See,
e.g., In re Surrick, 338 F.3d 224, 237 (3d Cir. 2003).
7
The District Court had subject matter jurisdiction
under 28 U.S.C. § 1332. We exercise appellate jurisdiction
pursuant to 28 U.S.C. § 1291.
10
(3d Cir. 2011) (citing Ruehl v. Viacom, Inc., 500 F.3d 375,
380 n.6 (3d Cir. 2007)). ―Summary judgment is appropriate
only where, drawing all reasonable inferences in favor of the
nonmoving party, there is no genuine issue as to any material
fact and . . . the moving party is entitled to judgment as a
matter of law.‖ Ruehl, 500 F.3d at 380 n.6 (quoting
Lexington Ins. Co. v. W. Pa. Hosp., 423 F.3d 318, 322 n.2 (3d
Cir. 2005)) (internal quotation marks omitted).
In a contract interpretation action, summary judgment
is appropriate only where the contractual language is
unambiguous—i.e., ―subject to only one reasonable
interpretation.‖ See Arnold M. Diamond, Inc. v. Gulf Coast
Trailing Co., 180 F.3d 518, 521 (3d Cir. 1999) (citations
omitted). ―If the nonmoving party presents a reasonable
alternative reading of the contract, then a question of fact as
to the meaning of the contract exists which can only be
resolved at trial.‖ Newport Assocs. Dev. Co. v. Travelers
Indem. Co., 162 F.3d 789, 792 (3d Cir. 1998) (citing Tigg
Corp. v. Dow Corning Corp., 822 F.2d 358, 361 (3d Cir.
1987); Landtect Corp. v. State Mut. Life Assurance Co., 605
F.2d 75, 80 (3d Cir. 1979)). Whether a contract is ambiguous
is an issue of law subject to plenary review. Sumitomo Mach.
Corp. v. AlliedSignal, Inc., 81 F.3d 328, 332 (3d Cir. 1996)
(citing Teamsters Indus. Emps. Welfare Fund v. Rolls-Royce
Motor Cars, Inc., 989 F.2d 132, 135 (3d Cir. 1993)).
Under New Jersey law (which the parties do not
dispute governs here), courts must always ―consider all of the
relevant evidence that will assist in determining the intent and
meaning of the contract‖ when making ambiguity
determinations. Conway v. 287 Corp. Ctr. Assocs., 901 A.2d
341, 346 (N.J. 2006). ―Evidence of the circumstances is
always admissible in aid of the interpretation of an integrated
agreement. This is so even when the contract on its face is
free from ambiguity.‖ Sumitomo Mach. Corp., 81 F.3d at 332
11
(quoting Atl. N. Airlines, Inc. v. Schwimmer, 96 A.2d 652,
656 (N.J. 1953)). In aid of interpretation, courts should
consider, for example, ―the particular contractual provision,
an overview of all the terms, the circumstances leading up to
the formation of the contract, custom, usage, and the
interpretation placed on the disputed provision by the parties‘
conduct.‖ Kearney PBA Local No. 21 v. Town of Kearney,
405 A.2d 393, 400 (N.J. 1979). Thus, courts must consider
all relevant evidence to determine if any ambiguity exists and,
if the contested provisions fall in that gray area, summary
judgment is improper.8
B. Breach of Contract
8
Federal law is consistent with this approach. See, e.g.,
Int’l Union, UAW v. Mack Trucks, Inc., 917 F.2d 107, 111
(3d Cir. 1990) (―‗In making the ambiguity determination, a
court must consider the words of the agreement, alternative
meanings suggested by counsel, and extrinsic evidence
offered in support of those meanings.‘‖ (quoting Kroblin
Refrigerated Xpress, Inc. v. Pitterich, 805 F.2d 96, 101 (3d
Cir. 1986))); Teamsters Indus. Emps., 989 F.2d at 135(instructing that a court construing contract language is not
permitted ―simply [to] determine whether, from [its] point of
view, the language is clear[, but instead must] ‗hear the
proffer of the parties and determine if there [are] objective
indicia that, from the linguistic reference point of the parties,
the terms of the contract are susceptible of different
meanings‘‖ (last alteration in original) (quoting Sheet Metal
Workers, Local 19 v. 2300 Grp., Inc., 949 F.2d 1274, 1284
(3d Cir. 1991))).
12
The District Court concluded that, as amended, the
License Agreement did not limit to whom GSK could market
and sell AG paroxetine after Mylan‘s two-year period of
generic exclusivity. Mylan argues there is a reasonable
alternative interpretation—i.e., that the Authorized Generic
Clause only allowed GSK to market and sell AG, whereas
supplying a third-party generic competitor with GSK-
produced AG paroxetine for marketing and sale to
downstream customers was impermissible—and thus the
District Court erred in refusing to consider the evidence
offered in support of this reading. For the reasons explained
below, we agree.
In support of its alternative meaning, Mylan presented
various forms of intent evidence.9 First, it submitted extrinsic
evidence of the License Agreement‘s negotiations, including
the parties‘ respective objectives and their actions taken to
mollify the FTC‘s concerns about Mylan‘s nine-year
exclusivity pre-Second Amendment. Mylan also offered
custom and usage evidence, including expert testimony
regarding industry understanding of the phrase ―marketing
and selling.‖10 Mylan pointed as well to rules of contract
9
In light of our decision that determining the meaning
of the Authorized Generic Clause is an issue properly left to
the jury, it is not necessary to engage in a protracted review
and analysis of this evidence. Accordingly, we provide only
an abridged discussion here.
10
In a specialized and highly technical field, such as the
pharmaceutical industry, trade usage evidence is particularly
instructive when interpreting the meaning of disputed
contractual language. See, e.g., USX Corp. v. Liberty Mutual
Ins. Co., 444 F.3d 192, 198 n.11 (3d Cir. 2006) (applying
Pennsylvania law).
13
construction—e.g., affording meaning to the use of different
words (in particular, ―affiliate‖ and ―third party‖) and reading
provisions in light of other relevant sections of the License
Agreement (specifically the section regarding the
consequences of a ―Negative Response‖ from the FTC)—to
support its interpretation of the Authorized Generic Clause.
The District Court needed to take into account the
alternative meaning suggested by Mylan, and the nature of
the objective evidence offered in support of its suggested
meaning, to determine whether that extrinsic evidence
―demonstrate[d] the existence of a latent ambiguity.‖
Duquesne Light Co. v. Westinghouse Elec. Corp., 66 F.3d
604, 614 (3d Cir. 1995) (quoting Samuel Rappaport Family
P’ship v. Meridian Bank, 657 A.2d 17, 22 (Pa. Super. Ct.
1995)) (internal quotation marks omitted). Yet it refused to
consider the extrinsic evidence submitted by Mylan. New
Jersey law, which is expansive as to extrinsic evidence in aid
of contract interpretation, requires otherwise. See Conway,
901 A.2d at 347 (―permit[ting] a broad use of extrinsic
evidence to achieve the ultimate goal of discovering the intent
of the parties . . . [and] to uncover the true meaning of
contractual terms‖). The District Court was not free to reject
such evidence on the ground that it found the agreement on its
Mylan asserts that its industry custom, practice, and
usage evidence was uncontested. However, while GSK did
not offer competing expert evidence on this subject, it did
produce its own evidence of industry practice with respect to
placing AG drugs on the market. To the extent GSK‘s
evidence is deemed reliable and relevant to the interpretation
of the License Agreement, it too should be considered by the
jury.
14
face free from ambiguity. See Atl. N. Airlines, 96 A.2d at
656.11
This is especially so when the alternative reading of
the contested language suggested by Mylan was both
reasonable and supported by objective evidence of the
parties‘ intentions. This demonstrates latent ambiguity in the
contractual language. Hence summary judgment was not
appropriate on Mylan‘s breach-of-contract cause of action.
―The construction of a written contract is usually a legal
question for the court, but where there is uncertainty,
ambiguity or the need for parol evidence in aid of
interpretation, then the doubtful provision should be left to
the jury.‖ Schor v. FMS Fin. Corp., 814 A.2d 1108, 1113–14
(N.J. Super. Ct. App. Div. 2002). The District Court‘s grant
of summary judgment in favor of GSK on Mylan‘s breach-of-
contract cause of action is therefore reversed and remanded
for that claim to proceed to trial.12
11
We note that the language quoted by the District Court
from International Union, UAW v. Skinner Engine Co. about
―creat[ing] an ambiguity where none exists,‖ 188 F.3d at 145,
does not apply here. As an initial matter, that case involved
the interpretation of a collective bargaining agreement under
Pennsylvania law. Further, the statement was made in the
context of rejecting self-serving testimony that contradicted,
rather than interpreted, facially unambiguous contractual
language. Id. In contrast, Mylan offered various forms of
objective evidence in support of its reading, and we believe
this evidence is interpretive rather than contradictory as to the
License Agreement‘s terms.
12
GSK also asserts Mylan failed to prove damages
caused by its alleged breach of the License Agreement.
15
C. Breach of the Implied Covenant of Good
Faith and Fair Dealing
The District Court identified two grounds on which
Mylan‘s breach of the implied covenant of good faith and fair
dealing claim failed. First, to the extent Mylan‘s cause of
action was based on on its right to preclude third-party
generic companies from selling AG paroxetine, the Court
rejected the claim because it had already determined the
contract language unambiguously did not give Mylan that
GSK‘s damages argument does not establish that it was
entitled to judgment as a matter of law on the contract claim.
First, Mylan submitted an expert report on damages it claims
to have suffered from Apotex‘s sales of AG paroxetine in the
District Court, which GSK moved to strike on the ground that
the report relied on documents and opinions that Mylan
withheld during discovery. The Court denied the motion as
moot after finding GSK was entitled to judgment as a matter
of law on Mylan‘s contractual claims. Because that motion
has not yet been addressed by the District Court, we will not
speculate on its merits but rather will allow the Court to
consider it on remand. Second, GSK suggests several
alternative factual scenarios that it claims would also have
generated generic paroxetine market competition and,
accordingly, the same ―harm‖ to Mylan. Whether and to
what degree GSK‘s hypothetical scenarios would have
affected Mylan‘s profits under the License Agreement—and
thus its damages from a breach thereof—is a disputed issue of
material fact to be resolved at trial.
16
right. Given our holding with respect to the contract claim,
this reasoning is without continuing force.
The Court also found, however, that Mylan had failed
to prove that GSK acted with the requisite bad motive or
intent when entering into the S&D Agreement with Apotex.
See Wilson v. Amerada Hess Corp., 773 A.2d 1121, 1130
(N.J. 2001) (requiring that a party have acted ―with the
objective of preventing the other party from receiving its
reasonably expected fruits under the contract‖ to establish a
breach of the implied covenant). Mylan retorts that bad
motive turns on the parties‘ intentions, and thus is a question
for the jury, citing Seidenberg v. Summit Bank, 791 A.2d
1068 (N.J. Super. App. Ct. Div. 2002). However,
Seidenberg‘s reference to the ―trier of fact‖ was meant to
illustrate that defining bad faith is ―unrealistic,‖ not to relieve
a party of its obligation to set out sufficient evidence of bad
intention—i.e., to demonstrate an issue of material fact—in
order to survive a motion for summary judgment. Id.(concluding it ―best to entrust the drawing of [the bad faith]
line to trial judges and juries‖ but admonishing against ―an
unduly expansive version of bad faith‖).
While the S&D Agreement arguably frustrated
expected profits of Mylan from sales of its generic products
by introducing a direct third-party competitor, it has not
produced any evidence that GSK entered into that subsequent
agreement with bad faith or improper motive. See id.Accordingly, we affirm the District Court‘s grant of summary
judgment on Mylan‘s good faith and fair dealing claim.
D. Tortious Interference with a Contract
As to the alleged tortious interference of contract by
Apotex, the District Court again rested its dismissal of this
claim on its conclusion that Mylan had no protectable right to
17
prevent third parties from selling AG paroxetine after its two-
year period of exclusivity. With that absence, Mylan failed to
make the threshold showing of an existing or prospective
contractual relationship required for a tortious interference
claim. See, e.g., Velop, Inc. v. Kaplan, 693 A.2d 917, 926
(N.J. Super. Ct. App. Div. 1997) (citing Printing Mart-
Morristown v. Sharp Elecs. Corp., 563 A.2d 31, 37 (N.J.
1989) (per curiam)). Given our determination that Mylan
arguably had a protectable contract right, we cannot conclude
that was a proper ground to conclude Apotex was entitled to
judgment as a matter of law on this claim.
Summary judgment was nonetheless appropriate here.
Under New Jersey law, a plaintiff must demonstrate
interference with a contractual relationship that is knowing,
intentional, and wrongful. See Lightening Lube, Inc. v. Witco
Corp., 4 F.3d 1153, 1167 (3d Cir. 1993) (citing Fineman v.
Armstrong World Indus., 980 F.2d 171, 186 (3d Cir.1992);
Printing Mart-Morristown, 563 A.2d at 37). Mylan falls
short of establishing that interference here.
As an initial matter, the record does not suggest that
Apotex had knowledge of Mylan‘s asserted contractual right
to preclude other generic pharmaceutical companies from
marketing and selling AG paroxetine. Actual knowledge of
the contract with which a defendant supposedly interfered is a
prerequisite to making out a claim for tortious interference.
Id.; see also Restatement (Second) of Torts § 766 cmt. i
(1979) (requiring that an actor ―have knowledge of the
contract with which he is interfering and of the fact that he is
interfering with the performance of the contract‖ to incur
liability).13 It is undisputed that Apotex never saw the
13
New Jersey has adopted the Restatement‘s definition
of tortious interference with a contract. See Matrix
18
License Agreement, and there is no evidence in the record
that it knew any specifics with regard to the Agreement‘s
terms during the S&D negotiations with GSK. And without
knowledge of the specific contractual right, Apotex cannot be
deemed to have intentionally interfered with that right.
Mylan nonetheless asserts that the knowledge
requirement was satisfied here based on evidence
establishing, in effect, willful blindness on the part of Apotex.
Assuming, for the sake of argument, that showing a deliberate
indifference to the terms of a contract would be sufficient to
satisfy the first tortious interference element, the record
merely demonstrates that Apotex understood Mylan had
licensing rights to sell a generic form of paroxetine. Mylan
has not pointed to any evidence indicating Apotex believed
that Mylan‘s licensing rights were exclusive as to other third-
party sellers or that Apotex‘s resale of AG paroxetine would
otherwise infringe the Licensing Agreement. See, e.g.,
DiGiorgio Corp. v. Mendez & Co., 230 F. Supp. 2d 552, 564
(D.N.J. 2002) (―General knowledge of a business relationship
is not sufficient; the defendant must have specific knowledge
of the contract right upon which his actions infringe.‖ (citing
Matrix Essentials, Inc., 870 F. Supp. at 1247)).
And even if we were to impute knowledge to Apotex,
Mylan has failed to establish the requisite ―malice‖ to sustain
this cause of action. Where the parties to a tortious
interference claim are business competitors—such as Mylan
and Apotex—establishing intentional and malicious
interference requires evidence that ―one competitor
interfere[d] with another‘s economic advantage through
conduct which [wa]s fraudulent, dishonest, or illegal.‖ Ideal
Essentials, Inc. v. Cosmetic Gallery, Inc., 870 F. Supp. 1237,
1247 (D.N.J. 1994) (citations omitted).
19
Dairy Farms, Inc. v. Farmland Dairy Farms, Inc., 659 A.2d
904, 936 (N.J. Super. Ct. App. Div. 1995) (citations omitted).
There is no record indication that Apotex secured its S&D
Agreement with GSK through fraud, dishonesty, or illegal
conduct of any kind.14 Even construed in the most favorable
light, the evidence was lacking to substantiate Mylan‘s
tortious interference cause of action, and summary judgment
was therefore properly granted to Apotex.
* * * * *
We hold that summary judgment was inappropriate as
to the breach-of-contract claim against GSK; thus we reverse
and remand for the parties to proceed to trial on that claim.
We also vacate the denial of GSK‘s motion to strike as moot
and remand to permit the District Court to consider that
motion on the merits. On all other grounds, we affirm the
Court‘s judgment.
14
A breach alone is insufficient to establish that a third
party is liable for tortious interference. See Restatement
(Second) of Torts § 766B cmt. e (explaining that interference
resulting from a breach of contract does not amount to
tortious behavior unless it was wrongful, which turns on the
actor‘s intent to interfere).
20