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Mallinckrodt IP v. B. Braun Medical Inc.

United States District Court, D. Delaware

December 14, 2017

MALLINCKRODT IP, MALLINCKRODT HOSPITAL PRODUCTS INC., and SCR PHARMATOP, Plaintiffs,
v.
B. BRAUN MEDICAL INC., Defendant. MALLINCKRODT HOSPITAL PRODUCTS INC. and MALLINCKRODT IP UNLIMITED COMPANY, Plaintiff,
v.
B. BRAUN MEDICAL INC., Defendant.

          MEMORANDUM ORDER

          HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE.

         Pending before the Court are: (1) Defendant B. Braun Medical Inc.'s ("B. Braun" or "Defendant") motion to dismiss the original Complaint for improper venue under Federal Rule of Civil Procedure 12(b)(3) (D.I. 12);[1] (2) B. Braun's motion to dismiss the Amended Complaint for improper venue and for fees pursuant to 35 U.S.C. § 285 (D.I. 16); and (3) Plaintiffs Mallinckrodt IP, Mallinckrodt Hospital Products Inc., SCR Pharmatop, and Mallinckrodt IP Unlimited Company's (collectively, "Plaintiffs") motion to strike portions of B. Braun's reply brief and accompanying Declaration of Rebecca Stolarick (D.I. 27).

         Having considered the parties' motion briefing (see D.I. 16, 20, 25, 28, 33) and letter briefing in response to the Court's September 11, 2017 Oral Order (see D.I. 38, 39, 40, 41), and for the reasons stated below, IT IS HEREBY ORDERED that:

1. B. Braun's motion to dismiss the initial Complaint (D.I. 12) is DENIED AS MOOT.
2. B. Braun's motion to dismiss the Amended Complaint (D.I. 16) is DENIED WITHOUT PREJUDICE to renew after a period of venue-related discovery.
3. Plaintiffs' motion to strike (D.I. 27) is DENIED.
4. The parties shall meet and confer and no later than December 21, 2017, submit a joint status report with their position(s) as to the scope and timing of the discovery to be taken pursuant to this Order.

         Fees Are Not Warranted

         The Court is not persuaded that this is an "exceptional case[]" warranting an award of attorney fees to B. Braun pursuant to § 285. Putting aside that B. Braun is not (at this point) "the prevailing party, " id., the Court also finds that this case is not one "that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated." Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 (2014). Plaintiffs' filing and maintenance of this suit in this District, while at the same time filing a "protective" suit in the Eastern District of Pennsylvania (so as not to risk losing the statutory 30- month stay on FDA approval of B. Braun's proposed generic product) (see D.I. 20 at 19), is neither unreasonable nor sanctionable. This is particularly true given recent developments in connection with venue law, see TC Heartland, 137 S .Ct. 1514, 1516 (2017), and uncertainty as to how to apply the patent venue statute, 28 U.S.C. § 1400(b), to Hatch-Waxman patent litigation. See, e.g., Galderma Lab. LP v. Teva Pharm. USA Inc., C.A. No. 17-1076 (N.D. Tex. Nov. 17, 2017), slip op. at 9 (disagreeing with this Court's opinion in BMS, stating "there are several issues with the decision that counsel this Court away from adopting the holding that an act of infringement occurs in any district where the AND A filer intends to market the AND A product after it receives FDA approval").

         Plaintiffs' Motion to Strike

         The Court is not persuaded that B. Braun improperly introduced new evidence and arguments by way of its reply brief and the supporting Stolarick Declaration. Instead, B. Braun properly reinforced arguments and evidence already presented in its opening brief or responded to Plaintiffs' arguments raised in the answering brief.

         B. Braun is Not A Delaware Resident for Purposes of Patent Venue

         Venue in a patent case is governed exclusively by 28 U.S.C. § 1400(b), TC Heartland, 137 S.Ct. 1514, 1516 (2017), which provides: "[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." For purposes of § 1400(b), a defendant which is a domestic corporation "resides" only in its state of incorporation. See TC Heartland, 137 S.Ct. at 1517. It is undisputed that B. Braun - which is incorporated in Pennsylvania (D.I. 14 at 3; D.I. 17 at 1) - does not "reside" in Delaware.

         Venue Is Potentially Proper Here Under the Second Prong of § 1400(b)

         Venue is proper in this District unless B. Braun can show that the second prong of § 1400(b) is not satisfied. See Bristol-Myers Squibb Co. v. Mylan Pharm. Inc., 2017 WL 3980155, at *5 (D. Del. Sept. 11, 2017) ("5MS") (holding that burden is on party opposing venue). That is, Delaware is a proper venue for this lawsuit unless B. Braun can meet its burden to show either that (i) it has not committed acts of infringement in Delaware, or (ii) it does not have a regular and established place of business in Delaware. If B. Braun can show either of the foregoing is true, then venue here is improper, and the Court will have to dismiss or transfer this case. B. Braun contends it has met its burden with respect to both requirements of this second prong of § 1400(b).

         The First Requirement: ...


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