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

Plaintiff moves to dismiss, or in the alternative to sever and transfer to the District Court for the Southern District of Indiana, one defendant’s counterclaim for a declaratory judgment that it is entitled to payment under an escrow agreement arising from a related Indiana action.  Defendant has also moved to strike plaintiff’s jury demand.  The parties include leading manufacturers and sellers of coronary stents.  The patents-in-suit describe a method for treating hemodynamic dysfunction by using electrodes to simultaneously stimulate the ventricles of the heart.  Plaintiff contends that defendant’s counterclaim should be dismissed pursuant to the first-filed rule insofar as the Indiana action and defendant’s counterclaim relate to the same claim and operative facts.  Alternatively plaintiff argues that the counterclaim should be transferred as it is unrelated to the patents-in-suit.  The Court disagrees and finds that the agreement is in fact related and that neither dismissal nor transfer is appropriate at this time given that the Indiana action is stayed and the motion addresses a counterclaim and not the entire case at bar.  However, resolution of the counterclaim is stayed pending disposition of the complaint.  Defendant’s motion to strike the jury demand is granted because of the equitable nature of the relief requested to compel royalties due under the parties’ agreement.  The fact that money may ultimately be received does not convert the nature of the action.