United States District Court, D. Delaware
MALLINCKRODT IP, MALLINCKRODT HOSPITAL PRODUCTS INC., and SCR PHARMATOP, Plaintiffs,
B. BRAUN MEDICAL INC., Defendant. MALLINCKRODT HOSPITAL PRODUCTS INC. and MALLINCKRODT IP UNLIMITED COMPANY, Plaintiff,
B. BRAUN MEDICAL INC., Defendant.
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE.
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.
(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).
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
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.
Are Not Warranted
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").
Motion to Strike
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.
Braun is Not A Delaware Resident for Purposes of Patent
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.
Is Potentially Proper Here Under the Second Prong of §
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).
First Requirement: ...