Patentee wins forum shopping contest
Robinson, J. Plaintiffs' motion to supplement their complaints are denied. Plaintiffs' motion to enjoin Defendants from prosecuting a New Jersey action is denied. Defendants' motion to dismiss one action based on a covenant not to sue is granted and the court dismisses the second Delaware action sua sponte in favor of a first-filed New Jersey action.
The patents-in-suit relate to drug-eluting coronary stents. The first complaint was filed September 26, 2006 involving three patents. On May 15, 2007, Plaintiffs (1) moved at 12:01 a.m. to supplement the complaint by adding a patent newly-issued to Cordis; and (2) filed a second action against Johnson & Johnson at 8:30 a.m. regarding the new patent. On the same day at 12:01 a.m., Johnson & Johnson filed an action in New Jersey regarding the same newly-issued patent. On May 29, another patent issued, at 12:02 J&J filed a New Jersy action, and at 12:20 Abbott moved to supplement the Delaware action, to amend the complaint in the second Delaware action or to consolidate. On June 12, 2007, a third new patent issued. At 12:03 J&J filed in New Jersey and at 12:19 Abbott filed in Delaware. On August 30, 2007, Cordis executed a covenant not to sue Abbott with respect to the earlier three patents and moved to dismiss the first Delaware action for lack of subject matter jurisdiction. A September 27, 2007 opinion held that the covenant not to sue divests the court of jurisdiction. Therefore, jurisdiction depends on whether Abbott is permitted to supplement its complaint. On November 27, 2007, a fourth patent issued and Abbott filed a supplemental motion to amend or consolidate at 12:14. The court concluded that J&J was the first to file the first new patent, rejecting the argument that the first Delaware action controlled because the actions were "inextricably intertwined."
A copy of the full opinion is available here.
