DJ count dismissed as unripe where accused product lacked FDA approval; stay granted pending reexamination
Abbott Diabetes Care, Inc. v. Dexcom, Inc., No. 05-590 GMS, Aug. 16, 2006.
Sleet, J. Motion to dismiss complaint is granted as to declaratory judgment count, and denied as to infringement count; motion to strike amended complaint is granted; and motion to stay pending reexamination is granted.
The disputed technology offers an alternative monitoring system for diabetics. A declaratory judgment claim asserts defendant intends to market a continuous glucose monitoring system which will infringe the patents-in-suit once it is approved by the FDA. The court dismissed the count, in the absence of an actual controversy, noting Abbott alleges only that it expects FDA approval, and does not allege sales or marketing activity. The amended complaint was stricken because it alleges facts regarding events taking place after the filing of the original complaint. Abbott should have moved for leave to file a supplemental pleading pursuant to Fed. R. Civ. P. 15(d). The infringement count, based upon display of the accused product at two scientific conferences, was not dismissed where the complaint alleges that the display fell outside the safe harbor protection of 271(e)(1). A motion to stay pending reexamination was granted where plaintiff failed to show prejudice. The prejudice alleged regarding need for injunctive relief was unpersuasive since plaintiff had not filed for a preliminary injunction. Furthermore, it was premised on the notion that the PTO would leave the more than 200 claims unaltered after reexamination. Reexamination could simplify some issues if some claims are found to be invalid. Since trial is not scheduled to begin until October 9, 2007, the balance of harm weighs in favor of a stay.
Sleet, J. Motion to dismiss complaint is granted as to declaratory judgment count, and denied as to infringement count; motion to strike amended complaint is granted; and motion to stay pending reexamination is granted.
The disputed technology offers an alternative monitoring system for diabetics. A declaratory judgment claim asserts defendant intends to market a continuous glucose monitoring system which will infringe the patents-in-suit once it is approved by the FDA. The court dismissed the count, in the absence of an actual controversy, noting Abbott alleges only that it expects FDA approval, and does not allege sales or marketing activity. The amended complaint was stricken because it alleges facts regarding events taking place after the filing of the original complaint. Abbott should have moved for leave to file a supplemental pleading pursuant to Fed. R. Civ. P. 15(d). The infringement count, based upon display of the accused product at two scientific conferences, was not dismissed where the complaint alleges that the display fell outside the safe harbor protection of 271(e)(1). A motion to stay pending reexamination was granted where plaintiff failed to show prejudice. The prejudice alleged regarding need for injunctive relief was unpersuasive since plaintiff had not filed for a preliminary injunction. Furthermore, it was premised on the notion that the PTO would leave the more than 200 claims unaltered after reexamination. Reexamination could simplify some issues if some claims are found to be invalid. Since trial is not scheduled to begin until October 9, 2007, the balance of harm weighs in favor of a stay.
