Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

Magistrate makes recommendations on various motions to dismiss.  Exercising its rights under the patent-in-suit, plaintiff manufactures and sells a drug under the brand name “Crestor”.  Plaintiff has brought this infringement action against a number of defendants who are all in some way or another involved with the filing of an ANDA.  Some or all of the defendants wish to manufacture and/or sell a product that would infringe the patent-in-suit.  Despite the number of motions, only three issues are presented to the Court.  First, the Magistrate declines to dismiss those defendants who purport to have signed the ANDA merely as an agent of the entity that actually submitted the application.  The statute makes the act of submitting the ANDA an infringing act. In this case, the subsidiary of the applicant and that subsidiary submitted the ANDA application to the FDA as agent on the foreign subsidiaries’ behalf.  Thus dismissal is denied.  Second, plaintiff’s count seeking a declaration of infringement pursuant to 35 U.S.C. §271 (a) is dismissed due to a lack of sufficiently immediate case and controversy.  Under Hatch-Waxman, plaintiff’s filing of Count I stayed FDA approval of all defendants’ ANDAs.  The stay will remain in place until well after trial is currently scheduled.  Thus there is no sufficient immediacy to the controversy.  Finally, the motions to dismiss for lack of personal jurisdiction are denied without prejudice.  Subsequent to the filing of these motions, the MDL Panel granted plaintiff’s motion to centralize all litigation related to the patent-in-suit in this District for coordinated and consolidated pretrial proceedings.  Thus the issue of personal jurisdiction is moot at this juncture.