Covenants not to sue warranted dismissal of counterclaims
Somaxon Pharmaceuticals, Inc., et al. v. Par Pharmaceutical, Inc., et al., Civ. No. 11-107-SLR, July 28, 2011.
Robinson, J. Defendants’ motion to dismiss or, in the alternative, for a more definite statement is granted. Counterclaim Counts III through XIV dismissed for lack of subject matter jurisdiction.
This is a February 2, 2011 ANDA case involving a generic version of Silenor®. Defendants replied seeking declaratory judgment of invalidity and non-infringement of the patent-in-suit and an additional six unasserted but related patents. Plaintiffs thereafter covenanted not to sue defendants as to these six patents and moved to dismiss the associated counterclaims for lack of subject matter jurisdiction. The motion was granted. “There is no case or controversy regarding those patents because the covenant not to sue removes the original subject matter jurisdiction[.]” The possibility of a future impediment to defendants’ ability to market Silenor® because of these patents is a non-issue.
