Institutional holders of patent rights were held not indispensable in suit against exclusive licensee
Amgen, Inc. et al. v. Ariad Pharmaceuticals, Inc., No. 06-259-MPT, Mar. 27, 2007.
Thynge, J. Defendant’s motion to dismiss for failure to join a party, or alternatively to transfer, was denied.
The patent in suit is owned by MIT, Whitehead Institute of Biomedical Research, and Harvard President and Fellows. Defendant is the exclusive licensee and plaintiff seeks to invalidate the patent. Defendant contends that it does not have all substantial rights to the patent because its right to sue for infringement is not exclusive and it has no right to indulge infringement. The court found that the institutions retained sufficient ownership and control of the party to be necessary parties under Rule 19(a). However, the institutions were not indispensable parties. The Court denied the motion to transfer the litigation to Massachusetts where related litigation was pending with Eli Lilly with different accused products. Location of documents and witnesses in Massachusetts do not overcome the substantial weight given to plaintiff’s choice of forum. Delaware has a substantial interest in maintaining lawsuits brought by and between Delaware corporations. Amgen was directed to add the institution Whitehead, which was subject to service of process in Delaware, as a party. Defendant was directed to advise the Court whether the other institutions would voluntarily intervene.
A copy of the full opinion is available here.
