BAYER INTELLECTUAL PROPERTY GMBH and BAYER PHARMA AG, Plaintiffs,
WARNER CHILCOTT COMPANY, and WARNER CHILCOTT PLC, Defendants.
Plaintiffs Bayer Intellectual Property GMBH and Bayer Pharma AG (collectively, "Bayer") brought this patent infringement suit against defendants Warner Chilcott Company, LLC, Warner Chilcott (US), LLC, and Warner Chilcott pic (collectively, "Warner Chilcott") on August 13, 2012, alleging infringement of U.S. Patent No. 5, 980, 940 ("'940 patent"). (D.I. 1.) Four months later, Bayer filed a First Amended Complaint that added a claim for patent "interference" under 35 U.S.C. § 291 between the '940 patent and Warner Chilcott's U.S. Patent No. 7, 704, 984 ("'984 patent). (D.I. 5.) Warner Chilcott then filed the present Rule 12(b)(1) Motion to Dismiss, or in the Alternative to Stay, Count II (Interfering Subject Matter under 35 U.S.C. § 291) on March 18, 2013. (D.I. 7.) For the reasons that follow, the court denies Warner Chilcott's motion to dismiss and motion to stay.
The patents in this lawsuit concern contraceptive regimens. Bayer markets an oral contraceptive called YAZ and is the owner of the '940 patent, among others in that field. (D.I. 11 at 4.) Warner Chilcott sells its own oral contraceptive called Lo Loestrin FE, which embodies the '984 patent. (Id. at 6.) Bayer alleges both that Warner Chilcott's Lo Loestrin FE product infringes the '940 patent, and that the '984 patent purportedly covering Lo Loestrin FE interferes with the'940 patent. (D.I. 5.)
Generic-drug manufacturers Lupin and Watson are seeking to market a generic version of Lo Loestrin FE. (D.I. 8 at 6-7.) Warner Chilcott is currently involved in patent litigation with those companies in New Jersey ("the New Jersey litigation"), asserting the '984 patent and another patent against the generics. (Id.) In response, Lupin has raised the defense, inter alia, that the claims of the '984 patent are invalid over Bayer's '940 patent. (D.I. 8 at 6-7.)
III. STANDARDS OF REVIEW
A. Motion to Dismiss for Lack of Subject Matter Jurisdiction
Federal Rule of Civil Procedure 12(b)(1) allows for dismissal where the court lacks subject matter jurisdiction over an action. Motions brought under Rule 12(b)(1) may raise either a facial or factual challenge to the court's jurisdiction. "In reviewing a facial attack, the court must only consider the allegations of the complaint and documents referenced therein and attached thereto, in the light most favorable to the plaintiff." Gould Ekes. Inc. v. United States, 220 F.3d 169, 176 (3d Cir. 2000). However, the party asserting subject matter jurisdiction bears "the burden of proof that jurisdiction does in fact exist." Mortensen v. First Fed. Sav. and Loan Ass'n, 549 F.2d 884, 891 (3d Cir. 1977).
B. Motion to Stay
A decision to stay litigation lies within the sound discretion of the court and represents an exercise of the court's "inherent power to conserve judicial resources by controlling its own docket." Cost Bros., Inc. v. Travelers Indent. Co., 760 F.2d 58, 60 (3d Cir. 1985), The court performs a balancing analysis using the following three factors to determine if a stay is appropriate: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set." First Am. Title Ins. Co. v. McLaren LLC, No. 10-363-GMS, 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012). This court has recognized that "[u]ndue prejudice and clear tactical disadvantage are more likely to exist where the grant of a stay imposes a greater burden on the non-movant than its denial would inflict on the movant." Image Vision. Net, Inc. v. Internet Payment Exch., Inc., No. 12-054-GMS-MPT, 2012 WL 5599338, at *3 (D. Del. Nov. 15, 2012).
A. Subject Matter Jurisdiction Under 35 U.S.C. § 291
Section 291 provides in pertinent part:
The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of ...