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Abbott Laboratories v. Roxane Laboratories, Inc.

United States District Court, Third Circuit

May 28, 2013

ABBOTT LABORATORIES, Plaintiff,
v.
ROXANE LABORATORIES, INC., Defendant.

REPORT AND RECOMMENDATION

CHRISTOPHER J. BURKE, Magistrate Judge.

Presently pending before the Court in this Hatch-Waxman dispute involving five patents are four fully-briefed motions: (1) a motion by Defendant Roxane Laboratories, Inc. ("Defendant" or "Roxane") to transfer this action to the U.S. District Court for the Southern District of Ohio (the "Motion to Transfer") (D.I. 13); (2) Plaintiff Abbott Laboratories' ("Plaintiff' or "Abbott") motion to dismiss all claims and counterclaims related to two of the asserted patents without prejudice ("Abbott's Motion to Dismiss") (D.I. 24); (3) Roxane's motion to dismiss the Complaint for lack of subject matter jurisdiction due to Abbott's August 2012 assignment of the patents-in-suit to AbbVie Inc. ("AbbVie") ("Roxane's Motion to Dismiss") (D.I. 32); and (4) Abbott's related motion to substitute AbbVie as Plaintiff in this action ("Motion to Substitute") (D.I. 34).

For the reasons that follow, I recommend that the Motion to Substitute be GRANTED, that Roxane's Motion to Dismiss be DENIED, that Roxane's Motion to Transfer be GRANTED and that Abbott's Motion to Dismiss be DENIED as moot.[1]

I. BACKGROUND

A. The Parties

Neither of the original parties to this action are Delaware corporations. Abbott, a corporation engaged in the business of research, development, manufacture and sale of pharmaceutical products throughout the world, is an Illinois corporation. (D.I. 8 at ¶ 1). Its corporate headquarters are located in Abbott Park, Illinois. ( Id. ) Roxane, a company that develops, markets and sells pharmaceutical ingredients, formulations and products, is a Nevada corporation with its principal place of business in Columbus, Ohio. ( Id. at ¶¶ 2, 6)

In October 2011, Abbott announced that it was undergoing a major reorganization of its worldwide business operations, whereby it was separating into two publicly traded companies: one focusing on research-based pharmaceuticals and the other on diversified medical products. (D.I. 34 at 2, ex. A) The research-based pharmaceutical company, AbbVie, is a Delaware corporation that is a wholly-owned subsidiary of Abbott. ( Id. ) (The diversified medical products company retains the Abbott name.) ( Id. ) The transition of Abbott's research-based pharmaceutical business to AbbVie by the end of 2012 involved AbbVie's acquisition of all of Abbott's patents and patent applications pertaining to Abbott's proprietary pharmaceuticals and biologics. (D.I. 38 at 3)

B. Procedural Background

This case arises out of Roxane's submission of Abbreviated New Drug Application ("ANDA") No. 202-573 to the United States Food and Drug Administration ("the FDA"), which seeks approval to market a generic version of Norvir®, a brand-name drug used to treat human immunodeficiency virus, more commonly known as HIV. (D.I. 8 at ¶¶ 12-14, 23) Abbott is the owner of approved New Drug Application ("NDA") No. 22-417, which covers ritonavir, the active ingredient in Norvir®. ( Id. at ¶ 12) Abbott listed eight patents in the Approved Drug Products With Therapeutic Equivalence Evaluations (the "Orange Book") for NDA No. 22-417: U.S. Patent Nos. 5, 541, 206 ("the '206 patent"); 5, 635, 523 ("the '523 patent"); 5, 648, 497 ("the '497 patent"); 5, 674, 882 ("the '882 patent"); 6, 037, 157 ("the '157 patent"); 6, 703, 403 ("the '403 patent"); 7, 148, 359 ("the '359 patent"); and 7, 364, 752 ("the '752 patent"). (D.I. 16, ex. E) All of these patents were assigned to Abbott as of the filing of the Complaint in this case. The first of these patents to expire will be the '206 and '882 patents in 2013, while the two most recently issued patents (the '359 and '752 patents) will not expire until 2019 and 2020, respectively. ( Id. )

On March 24, 2011, Roxane notified Abbott that it had filed ANDA No. 202-573, seeking approval to market Roxane's generic version of ritonavir prior to the expiration of the '359 patent and the '752 patent.[2] (D.I. 8 at ¶ 16) None of the other patents listed in the Orange Book as covering NDA No. 22-417 were identified in Roxane's ANDA. Roughly one year later, on April 6, 2012, Roxane notified Abbott that it had amended its paragraph IV certification, and now sought approval to market its generic version of ritonavir prior to the expiration of the '497 patent, the '157 patent, and the '403 patent.[3] ( Id. at ¶ 17)

On April 10, 2012, four days after Abbott received Roxane's notice of an amended ANDA, Roxane filed suit in the Southern District of Ohio seeking a declaratory judgment that the '359 and '752 patents (collectively, "the Ohio patents-in-suit") are invalid and/or will not be infringed by Roxane's generic ritonavir product. Roxane Labs., Inc. v. Abbott Laboratories, 2:12-cv-312-MHW-NMK (S.D. Ohio) (hereinafter "the Ohio Action"); (D.I. 14 at 2, 5). The Ohio Action was assigned to United States District Judge Michael H. Watson. Later that same day, Abbott filed the Complaint in the present action (hereinafter "the Delaware Action"), asserting infringement of the two Ohio patents-in-suit and the '497 patent. (D.I. 1) On April 11, 2012, Abbott filed an Amended Complaint in this Court, which also asserted infringement of the other two patents that were added in Roxane's amended ANDA (the '157 patent, and the '403 patent).[4] (D.I. 8) On April 12, 2012, Abbott filed a motion to dismiss the Ohio Action, or in the alternative, to transfer the Ohio Action to the District of Delaware. (D.I. 16, ex. H)

On May 1, 2012, Roxane filed the instant Motion to Transfer, seeking to transfer the Delaware Action to the Southern District of Ohio. (D.I. 13)[5] Abbott responded to Roxane's motion, and briefing on the motion was completed on May 29, 2012. (D.I. 16, 17) The Court held oral argument on Roxane's motion to transfer this action on July 12, 2012. (D.I. 28)

During the pendency of Roxane's motion in this Court, Judge Watson heard oral argument relating to Abbott's motion to transfer or dismiss the Ohio Action. (D.I. 20, ex. A at 1) Judge Watson denied Abbott's motion, ( id. at 7), and entered a preliminary scheduling order that set deadlines for discovery and Markman proceedings, (D.I. 28 at 7). Judge Watson also later denied Roxane's motion to enjoin Abbott from proceeding with the Delaware Action. (D.I. 30)

On July 6, 2012, Abbott moved to dismiss without prejudice all claims and counterclaims in the Delaware Action directed to the '359 patent and the '759 patent. (D.I. 24) On July 11, 2012, Roxane filed a response to Abbott's motion, arguing that the motion was merely an attempt to manipulate venue by influencing the outcome of its Motion to Transfer. (D.I. 27) Briefing on Abbott's Motion to Dismiss in the Delaware Action was completed on July 23, 2012. (D.I. 29)

Just a few weeks later, the procedural posture of this case took another turn. On August 28, 2012, Abbott filed a letter with the Court, informing the Court of Abbott's decision to separate into two publicly traded companies. (D.I. 31 at 1) Abbott noted that in furtherance of this planned reorganization, on August 1, 2012, it had assigned the Delaware patents-in-suit to AbbVie (at the same time that Abbott assigned thousands of patents and patent applications from countries around the world to AbbVie). ( Id. ; D.I. 38 at 3-4 & ex. B). It noted that given this change in ownership, "AbbVie is unquestionably the proper plaintiff and Abbott will be working with Roxane on an appropriate stipulation to substitute AbbVie for Abbott as plaintiff in the case." (D.I. 31 at 1) Abbott also noted its belief that AbbVie's status as a Delaware corporation "adds to the weight given to Delaware" in the analysis of Roxane's Motion to Transfer. ( Id. at 1-2)

Work on the stipulation proposed by Abbott never materialized, as just a day later, on August 29, 2012, with its Motion to Transfer pending, Roxane filed its Motion to Dismiss. (D.I. 32) In a memorandum filed along with the motion, Roxane argued that because Abbott had assigned the patents-in-suit to AbbVie and no longer held legal title to those patents, its dispute with Roxane had become moot and there remained no justiciable case or controversy in this matter to support Article III jurisdiction. (D.I. 33 at 1) The very same day, August 28, 2012, Abbott filed its Motion to Substitute, arguing that in light of the assignment of the patents-in-suit to AbbVie, the Court should order AbbVie substituted for Abbott as the plaintiff in this case pursuant to Federal Rule of Civil Procedure 25(c). (D.I. 34 at 2)

The parties went on to complete briefing on these two motions by October 1, 2012-with Roxane arguing that dismissal, not substitution, was the proper result stemming from the AbbVie assignments, and Abbott arguing the opposite. (D.I. 37, 38, 41, 42) In light of Abbott's later request for oral argument on these two new motions, (D.I. 43), and in light of the motions' potential impact on the entire case and on the pending Motion to Transfer, the Court held oral argument on December 3, 2012. (D.I. 59)

The parties have also thereafter made numerous supplemental filings regarding the motions, all of which the Court has reviewed. They have also proceeded with discovery in the case during the pendency of the motions. (D.I. 51-58)

II. DISCUSSION

A. Roxane's Motion to Dismiss and the Motion to Substitute

Roxane's Motion to Dismiss and the Motion to Substitute both relate to the same underlying issue: how does Abbott's assignment of the patents-in-suit to AbbVie impact this litigation?

1. Standards of Review

a. Roxane's Motion to Dismiss

Pursuant to Rule 12(b)(1), the Court may dismiss a complaint for lack of subject matter jurisdiction. Fed.R.Civ.P. 12(b)(1). Motions brought under Rule 12(b)(1) may present either a facial or a factual challenge to the Court's subject matter jurisdiction. Mortensen v. First Fed. Sav. & Loan Ass'n, 549 F.2d 884, 891 (3d Cir. 1977); Enhanced Sec. Research, LLC v. Juniper Networks, Inc., C.A. No. 09-871-JJF, 2010 WL 2898298, at *2 (D. Del. July 20, 2010). With respect to a factual challenge like the one at issue in Roxane's Motion to Dismiss, the Court may consider evidence outside the pleadings, including affidavits, depositions, and testimony, to resolve factual issues bearing on jurisdiction. Enhanced Sec. Research, 2010 WL 2898298, at *2 (citing Gotha v. United States, 115 F.3d 176, 179 (3d Cir. 1997)). Moreover, in reviewing such a challenge, the presumption of truthfulness does not attach to the allegations of the complaint. Id. (citing Mortensen, 549 F.2d at 891). Once the Court's subject matter jurisdiction is challenged, the plaintiff must bear the burden of persuasion and establish that subject matter jurisdiction exists. St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., Civil Action No. 06-404-JJF-LPS, 2009 WL 1220546, at *3 (D. Del. May 4, 2009) (citing Kehr Packages, Inc. v. Fidelcor, Inc., 926 F.2d 1406 (3d Cir. 1991)).

b. Motion to Substitute

Federal Rule of Civil Procedure 25(c) provides that "[i]f an interest is transferred, the action may be continued by or against the original party unless the court, on motion, orders the transferee to be substituted in the action or joined with the original party." Fed.R.Civ.P. 25(c). Rule 25(c) does not require a party or a court to take any action after an interest has been transferred. Luxliner P.L. Export, Co. v. RDI/Luxliner, Inc., 13 F.3d 69, 71 (3d Cir. 1993). However, the Rule provides that if a party wishes to do so, it may move for substitution or joinder of a transferee in interest. Fed.R.Civ.P. 25(c). "Because joinder or substitution under Rule 25(c) does not ordinarily alter the substantive rights of parties, [the decision as to whether to grant a Rule 25(c) motion] is generally within the district court's discretion." Luxliner, 13 F.3d at 71-72.

The United States Court of Appeals for the Third Circuit has emphasized that a court's focus when assessing a Rule 25(c) motion must be on whether substitution or joinder would best "facilitate the conduct of the litigation." Luxliner, 13 F.3d at 72; see also Fed. Deposit Ins. Corp. v. Tisch, 89 F.R.D. 446, 448 (E.D.N.Y. 1981) (noting that because the decision to order substitution or joinder does not impact a party's substantive rights, the decision should "be made by considering how the conduct of the lawsuit will be most facilitated"). In examining a Rule 25(c) motion, the court must first analyze "the respective rights and liabilities among the parties and the transferee under the substantive law governing the case, " and then must determine "whether it would best facilitate the conduct of the case to have the transferor remain in the case, substitute the transferee, or join the transferee and continue with both as parties." 6 James Wm. Moore, et al., Moore's Federal Practice § 25.34[3] (3d ed. 2011).

2. Analysis of Roxane's Motion to Dismiss and the Motion to Substitute

The United States Supreme Court has explained that, in order to satisfy Article III's standing requirements, a plaintiff must show that it has standing: that it has suffered "injury in fact, " that the injury is fairly traceable to the challenged action of the defendant, and that it is likely that the injury will be redressed by a favorable decision. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992). The Supreme Court has also explained that "through all stages of federal judicial proceedings, '" the plaintiff's cause of action must present a justiciable case or controversy, such that the plaintiff "continue[s] to have a personal stake in the outcome of the lawsuit.'" Spencer v. Kemna, 523 U.S. 1, 7 (1998) (quoting Lewis v. Cont'l Bank Corp., 494 U.S. 472, 477-78 (1990)). "This means that, throughout the litigation, the plaintiff' must have suffered, or be threatened with, an actual injury traceable to the defendant and likely to be redressed by a favorable judicial decision.'" Id. (quoting Lewis, 494 U.S. at 477). If, during the litigation, the plaintiff's claim no longer amounted to a case or controversy under Article III, its case would be moot. Id.

With respect to standing in a patent infringement case, the Patent Act provides that "[a] patentee shall have remedy by civil action for infringement of his patent." Sicom Sys., Ltd., v. Agilent Techs., Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) (quoting 35 U.S.C. § 281).[6] The Federal Circuit has explained that "[o]nly the entity or entities that own or control all substantial rights in a patent can enforce rights controlled by that patent, lest an accused infringer be subjected to multiple suits and duplicative liability." Ip Venture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1325 (Fed. Cir. 2007). The term "patentee'" comprises not only the patentee to whom the patent was issued, but also the successors in title to the patentee-that is, the party holding legal title to the patent. Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (Fed. Cir. 2007) (quoting 35 U.S.C. § 100(d)). "A patent grant bestows the legal right to exclude others from making, using, selling or offering to sell the patented invention in the United States, or importing the invention." Id. Constitutional injury in fact occurs when a party performs at least one prohibited action with respect to the patented invention. Id.

If the patentee transfers all substantial rights in a patent, this amounts to an assignment; in such cases, the assignee may be deemed the effective "patentee" under the Patent Act for purposes of holding constitutional standing to sue another for patent infringement in its own name. Sicom Sys., 427 F.3d at 976 (citing cases). An assignee may not sue for damages for infringing activity that occurred prior to the assignment unless the assignment agreement expressly grants the right to sue for such past infringement. Minco, Inc. v. Combustion Eng'g, Inc., 95 F.3d 1109, 1117 (Fed. Cir. 1996); UD Tech. Corp. v. Phenomenex, Inc., C.A. No. 05-842-GMS, 2007 WL 28295, at *4 (D. Del. Jan. 4, 2007).

The Federal Circuit has made clear that in a patent infringement case, if the plaintiff who filed the original complaint lacked Article III standing, the suit must be dismissed. Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005). In such circumstances, the jurisdictional defect cannot be cured by the later addition of a party with standing, nor by the subsequent purchase by the plaintiff of an interest in the patent-in-suit. Id. (citing Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003); Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 780 (Fed. Cir. 1996)).

In this case, however, it is undisputed that when the original Complaint was filed, Abbott was the owner of the patents-in-suit and that it had standing to sue. (D.I. 33 at 1-3; D.I. 38 at 5, 7-8; D.I. 41 at 1-3); see also Schreiber Foods, 402 F.3d at 1202 n.3 ("The initial standing of the original plaintiff is assessed at the time of the original complaint, even if the complaint is later amended.") It is also undisputed that on August 1, 2012, Abbott assigned legal title to the patents-in-suit (including the right to sue for past, present and future infringement) to AbbVie. (D.I. 33 at 1-3; D.I. 38 at 5, 7-8; D.I. 41 at 1) Both parties thus agree that as of the assignment, Abbott lost a legally cognizable interest in the case, such that the case against Abbott became moot.[7] ( Id. ); see also Schreiber Foods, 402 F.3d at 1203 (explaining that when a plaintiff with standing transferred its rights in the patents-in-suit during the litigation, it "lost standing to sue for infringement and the case became moot"). What the parties do dispute, however, is whether-in light of Roxane's subsequent filing of its Motion to Dismiss-the Court is therefore required to dismiss the case for lack of subject matter jurisdiction.

Roxane argues that dismissal is required, asserting that if "the plaintiff relinquishes its rights to the patent during the pendency of the litigation, the dispute becomes moot and... there remains no justiciable dispute between Abbott and Roxane [such that the] Amended Complaint must be dismissed for lack of jurisdiction." (D.I. 33 at 1) Roxane asserts that the standing issue should be judged at the moment there is a challenge to subject matter jurisdiction. (D.I. 33 at 5 n.3; D.I. 41 at 2) Therefore, it argues that because "Abbott lacked standing at the time of [the filing of Roxane's Motion to Dismiss], " Abbott should not be permitted to substitute AbbVie as Plaintiff pursuant to Rule 25(c), as "Rule 25(c) is not available to cure the jurisdictional defect here, for a procedural rule cannot create federal subject matter jurisdiction where none exists." (D.I. 41 at 2) For its part, although Abbott acknowledges that it lost standing to sue at the time of its assignment of the patents-in-suit to AbbVie, Abbott asserts that "[u]nder established Federal Circuit precedent, a patent owner may assign its rights during the pendency of a patent infringement action, not withstanding a gap of time between the original assignment and the substitution of the parties." (D.I. 38 at 2) Abbott argues that pursuant to Rule 25(c), its motion to substitute AbbVie as plaintiff in this action "was timely and the correct mechanism for bringing AbbVie into the case in Abbott's stead." ( Id. )

a. Schreiber Foods, Qimonda and the Authority Cited Therein

Abbott supports its arguments in part by citing to a number of Federal Circuit cases, most prominent among them Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005). Roxane, however, focuses heavily on the decision in Qimonda AG v. LSI Corp., 857 F.Supp.2d 570 (E.D. Va. 2012). Because those cases analyze many of the issues that have resonance in this area, the Court will address them together.

In Schreiber Foods, plaintiff Schreiber Foods, Inc. ("Schreiber Foods"), a producer of cheese products, filed suit in January 1997 against a number of defendants, including Kustner Industries ("Kustner"). Schreiber Foods, 402 F.3d at 1200. The suit initially alleged that defendants had infringed one patent ("the first patent"), which was owned at the time by Schreiber Foods. Id. In March 1997, while the case was being litigated, Schreiber Foods assigned the first patent, including all claims and causes of action thereunder, to its subsidiary Schreiber Technologies, Inc. ("Schreiber Technologies"), in return for Schreiber Technologies' grant of a non-exclusive license to the first patent back to Schreiber Foods. Id. Schreiber Foods did not inform defendants or the district court of the assignment and thus Schreiber Technologies was not joined as a party to the lawsuit. Id. Next, in December 1997, a second patent ("the second patent") was issued to Schreiber Foods, and Schreiber Foods amended its complaint to allege that Kustner also infringed that patent. Id. In that amended complaint, Schreiber Foods falsely stated that it owned and had standing to sue for infringement of the first patent. Id. at 1200-01. The case proceeded to trial in August 1998, during which a Schreiber Foods employee falsely testified that Schreiber Foods owned the first patent. Id. at 1201. The jury returned a verdict that the two patents-in-suit were valid and infringed and assessed $26 million in damages; defendants thereafter moved for a judgment notwithstanding the verdict. Id.

In September 1998, while that motion was pending, Schreiber Foods' counsel learned of the assignment of the first patent. Id. Instead of notifying the district court of the assignment at that stage, Schreiber Foods instead, on the advice of counsel, simply reacquired the first patent via assignment from Schreiber Technologies. Id. This second assignment was also not disclosed to the district court or to opposing counsel. Id. After the district court granted the judgment notwithstanding the verdict, only to have the Federal Circuit reverse and order the verdict reinstated, the district court entered judgment in Schreiber Foods' favor in September 2002. Id. Only thereafter, in October 2002, did Kustner learn (from an unrelated lawsuit), about the earlier assignment of the first patent to Schreiber Technologies. Id. Kustner then brought a motion to vacate judgment pursuant to Rule 60(b), which the district court granted, holding that Schreiber Foods' lack of ownership of the first patent during the litigation had deprived it of standing and rendered the suit moot, such that the court's judgment was void. Id. at 1201-02.

In reviewing the district court's decision, the Federal Circuit first noted that "[a]t the time this action commenced, Schreiber [Foods] was the owner of the [first patent] and had standing" but that "once the assignment to Schreiber Technologies was completed, there was no question that Schreiber [Foods] lost its personal stake in the outcome'" of the case. Id. at 1202. It explained that because that assignment included the right to sue for all causes of action, including past infringement, Schreiber Foods became a mere non-exclusive licensee, and did not have constitutional standing to sue for the patent's infringement. Id. at 1202-03 (citing Intellectual Prop. Dev., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1345 (Fed. Cir. 2001)). However, the Schreiber Foods Court went on to note that "the mootness in this case was only temporary" as "Schreiber [Foods] regained its stake in the litigation when it reacquired the [first patent] before the entry of judgment." Id. at 1203. It noted that the question before it was "whether a judgment is void when there is a temporary transfer of the patent in suit to a non-party, which temporarily deprives the court of jurisdiction, even though the plaintiff owned the patent at the commencement of the suit and at the time of judgment?" Id.

Ultimately, the Schreiber Foods Court held that the judgment was not void in such circumstances. In doing so, it examined Supreme Court precedent on standing, finding that the rule that a plaintiff must have initial standing and "continue to have a personal stake in the outcome' of the lawsuit" to be a "rule [that] is not absolute." Id. (quoting Spencer, 523 U.S. at 7 (additional citation omitted)). The Federal Circuit went on to describe Supreme Court precedent in the area in this way:

In cases where the plaintiff lacked initial standing or the case suffered from some other jurisdictional defect at the time suit is commenced, the Supreme Court's cases are less than clear as to whether and how a jurisdictional defect can be remedied in the course of litigation. For example, the [Supreme] Court has held that, where federal jurisdiction is invoked initially on grounds of diversity, and diversity did not exist at the time of suit, it cannot be remedied by a change in citizenship before judgment. Grupo Dataflux v. Atlas Global Grp., L.P., 541 U.S. 567 [] (2004). On the other hand, where federal jurisdiction is invoked under the removal statute, dismissing a non-diverse party after removal and before judgment cures the defect. Caterpillar [Inc. v. Lewis, 519 U.S. 61, 73 (1996)].

Id. The Schreiber Foods Court noted that the Federal Circuit's own precedent established that if an original plaintiff in a patent infringement case lacked standing, the suit must be dismissed-but it explained that in the instant case, Schreiber Foods had constitutional standing at the time the suit was commenced, and that "after assigning the [first patent] Schreiber [Foods] reacquired it before the entry of judgment." Id.

The Federal Circuit went on to further analyze both the Supreme Court's standing jurisprudence and its own (and other circuits' decisions in the area) by noting the following:

In circumstances where dismissal for lack of initial standing is not required, the Supreme Court held in Caterpillar that jurisdictional defects can be cured before judgment. Caterpillar involved a Kentucky plaintiff suing an Illinois defendant and a Kentucky defendant. After the suit was removed to federal court with both defendants, the Kentucky defendant settled and was dismissed from the suit. The Supreme Court held that although "the complete diversity requirement [for removal jurisdiction] was not satisfied at the time of removal, " "the jurisdictional defect was cured" by the dismissal of the non-diverse party. Caterpillar, 519 U.S. at 70, 73 []. This holding was confirmed by the Court in Grupo [ Dataflux ], which stated: "The postsettlement dismissal of the diversity-destroying defendant [in Caterpillar] cured the jurisdictional defect... the less-than-complete diversity which had subsisted throughout the action had been converted to complete diversity between the remaining parties to the final judgment." 124 S.Ct. at 1925.
This court has also held that the temporary loss of standing during patent litigation can be cured before judgement. In Insituform Technologies, Inc. v. Cat Contracting, Inc., 385 F.3d 1360, 1371-72 (Fed. Cir. 2004), the original plaintiff was the owner of the patent at the time of filing suit. After the trial and verdict, but before judgment, the patent (together with the right to sue for past infringement) was transferred to the plaintiff's subsidiary, which was then not a party to the suit. The subsidiary waited for two years before filing a motion to be joined as a party, which was then granted before judgment. We upheld the district court's joinder decision. Id. at 1372. Other circuits have taken a similar approach. See ELCA Enters. v. Sisco Equip. Rental & Sales, Inc., 53 F.3d 186, 190-91 (8th Cir. 1995) (ordering the substitution of the transferee of the real property in suit, and holding that such substitution cured any potential jurisdictional defect arising from the transfer of the property during ...

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