In September 2006, Abbot filed civil action no. 06-613 (“06-613 action”) in the Delaware District Court against J & J/Cordis seeking a declaratory judgment that J & J/Cordis’ Patents 764, 796, and 536 were invalid and that Abbott did not infringe the patents.
Eight months later, on May 15, 2007, the very day that the U.S. Patent and Trademark Office (“PTO”) issued Patent 7286 to J & J, Abbot concurrently filed a motion to supplement its 06-613 action to add the Patent 7286 to its action, and a declaratory action against J & J based on the 7286 patent. On that same day, J & J filed an action against Abbott in the New Jersey District Court asserting infringement of the 7286 Patent. Abbott filed four subsequent motions for leave to file an amended complaint in the 06-613 action.
On August 30, 2007, Cordis executed a covenant not to sue Abbot for infringement of the 764, 796 or 536 patents. The next day, J & J moved to dismiss the 06-613 action for lack of subject matter jurisdiction.
The Delaware District Court addressed Abbot’s motions for leave to supplement its complaints in each action; Abbot’s motion to enjoin J & J from prosecuting the New Jersey action; and J & J’s motion to dismiss the 06-613 action based on the covenant not to sue.
The Court initially denied Abbott’s motion to supplement the 06-613 complaint. The covenant not to sue divested the Court of declaratory judgment jurisdiction in the 06-613 action, and Abbott’s motion to supplement did not justify ignoring the legal effect of the covenant. The Court granted J & J’s motion dismissing case 06-613.
The Court also denied Abbott’s motion to enjoin J & J from prosecuting its 7286 Patent action in New Jersey. Where proceedings involving the same parties and issues are pending simultaneously in different federal courts, the first-to-file rule requires dismissal of the second-filed suit absent exceptional circumstances. E.E.O.C. v. Univ. of PA., 850 F.2d 969, 976-79 (3rd Cir. 1988). J & J filed the first suit regarding the 7286 Patent. The Court rejected Abbott’s assertion that the 06-613 action should be deemed first filed because the actions were “inextricably intertwined”; no case or controversy existed prior to May 15, 2007, the date of the 7286 Patent filing. Evidence of forum shopping by both parties was not exceptional in any manner to justify departure from the first-filed rule.
Because the New Jersey action was the first-filed, the Court declined jurisdiction over Abbott’s other complaints and denied Abbott’s motions for leave to supplement those complaints.
Judge(s): Sue L. Robinson, District Court Judge
Related Categories: Civil Procedure , Civil Remedies
|Plaintiff Lawyer(s)||Plaintiff Law Firm(s)|
|Christopher J. Buchko||McAndrews Held & Malloy Ltd.|
|Sandra A. Frantzen||McAndrews Held & Malloy Ltd.|
|James M. Hafertepe||McAndrews Held & Malloy Ltd.|
|Leland G. Hansen||McAndrews Held & Malloy Ltd.|
|Edward A. Mas, II||McAndrews Held & Malloy Ltd.|
|Stephanie F. Pall||McAndrews Held & Malloy Ltd.|
|Frederick Cottrell III||Richards Layton & Finger PA|
|Anne Gaza||Richards Layton & Finger PA|
|Defendant Lawyer(s)||Defendant Law Firm(s)|
|Steven J. Balick||Ashby & Geddes|
|John G. Day||Ashby & Geddes|
|Tiffany Geyer Lydon||Ashby & Geddes|
|Lauren E. Maguire||Ashby & Geddes|
|Russell Cass||Sidley Austin LLP|