Boston Scientific Corp. v. Johnson & Johnson Inc.

• Decision Date: 24 January 2008
• Docket Number: Civ. No. 07-409-SLR.,Civ. No. 07-348-SLR.,Civ. No. 07-333-SLR.,Civ. No. 07-765-SLR.
• Citation: 532 F.Supp.2d 648
• Court: U.S. District Court — District of Delaware
• Parties: BOSTON SCIENTIFIC CORPORATION and Boston Scientific Scimed Inc., Plaintiffs, v. JOHNSON & JOHNSON INC. and Cordis Corporation, Defendants.

532 F.Supp.2d 648

BOSTON SCIENTIFIC CORPORATION and Boston Scientific Scimed Inc., Plaintiffs, v. JOHNSON & JOHNSON INC. and Cordis Corporation, Defendants.

Civ. No. 07-333-SLR.

Civ. No. 07-348-SLR.

Civ. No. 07-409-SLR.

Civ. No. 07-765-SLR.

United States District Court, D. Delaware.

January 24, 2008.

COPYRIGHT MATERIAL OMITTED

Josy W. Ingersoll, Esquire and Karen E. Keller, Esquire of Young Conaway Stargatt & Taylor, LLP, Wilmington, DE, of Counsel, Richard L. Delucia, Esquire, Paul M. Richter, Esquire, Michael K. Levy, Esquire and Jerry. Canada, Esquire of Kenyon & Kenyon LLP, New York, NY, for Plaintiffs.

Steven J. Balick, Esquire, John G. Day, Esquire and Lauren E. Maguire, Esquire of Ashby & Geddes, Wilmington, DE, of Counsel, David T. Pritikin, Esquire, William H. Baumgartner, Jr., Esquire, Paul E. Veith, Esquire and Russell E. Cass, Esquire Of Sidley Austin LLP, Chicago, IL, for Defendants.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Currently pending before the court are several motions in several related declaratory judgment patent actions. Plaintiffs Boston Scientific Corporation and Boston Scientific Scimed, Inc. (collectively, "BSC") have filed four complaints against defendants Johnson & Johnson, Inc. and Cordis Corporation (collectively, "J & J"), seeking a judgment that each of four J & J patents are invalid: U.S. Patent Nos. 7,217,286 ("the '7286 patent") (Civ. No. 07-333, D.I. 1); 7,223,286 ("the '3286 patent") (Civ. No. 07-348, D.I. 1); 7,229,473 ("the '473 patent") (Civ. No. 07-409, D.I. 1); and 7,300,662 ("the '662 patent") (Civ. No. 07-765, D.I. 1). J & J has filed, in each action, a motion to dismiss for lack of subject matter jurisdiction and a motion to transfer to the District of New Jersey. (Civ. No. 07-333, D.I. 10, 21; Civ. No. 07-348, D.I. 8, 19; Civ. No. 07-409, D.I. 7, 22; Civ. No. 07-765, D.I. 8, 9) For the reasons that follow, the court denies each of these motions.

II. BACKGROUND

A. The Patents and Technology at Issue

The four patents at issue relate generally to drug-eluting coronary stents. The '7286, '3286, and '473 patents are all members of the same patent family, and issued from continuation applications each claiming priority to the same patent. Each of these patents share a common specification. The '662 patent shares two common inventors with the '7286, '3286, and '473 patents but is not a member of the same patent family.

Additional competitors in the coronary stent market, Abbott Laboratories and Abbott Cardiovascular Systems, Inc. (collectively, "Abbott"), manufacture a drug-eluting stent under the "Xience V" brand. BSC manufactures a drug-eluting stent under the "Promus" tradename, which is a private-labeled version of Abbott's Xience V stent. Abbott makes these stents in the United States. BSC takes possession of the stents in California, ships them to its facility in Massachusetts, then readies them for transfer and sale in Europe. (Civ. No. 07-333, D.I. 14 at 4) BSC does not sell the Promus stent in the United States as it has not yet received FDA approval.¹ (Id., D.I. 1 at ¶¶ 17-18)

B. Concurrent Litigation

Abbott previously filed declaratory judgment actions against J & J in which Abbott contested the validity of the '7286 patent (Civ. No. 07-259) and other J & Downed patents not named in the present BSC actions (Civ. No. 06-613). Abbott filed four motions to supplement its complaints in Civ. Nos. 06-613 and 07-259 to add patents at issue in the present BSC actions; the court denied those motions, and subsequently dismissed both actions. Specifically, Civ. No. 06-613 was dismissed for lack of subject matter jurisdiction, while Civ. No. 07-259 was dismissed because J & J was first to file its lawsuit concerning the '7286 patent in the District of New Jersey. (Civ. No. 07-259, D.I. 25) There are now four lawsuits pending in the District of New Jersey in which J & J asserts infringement of each of the '7286, '3286/473 and '662 patents by Abbott.²

A patent infringement suit is also pending in the Northern District of California entitled Medtronic Vascular et al. v. Advanced Cardiovascular Systems, Inc. et. al. ("Medtronic"),³ in which plaintiffs assert that. Abbott's stents infringe several stent patents not at issue in this litigation.⁴ The Medtronic court granted a motion by BSC to intervene as a counter-claimant, finding that the facts as alleged show that a sufficient controversy exists to warrant the issuance of a declaratory judgment.⁵ (Medtronic, Civ. No. 06-1066, D.I. 159 at 2, found in the present docket at Civ. No. 07-333, D.I. 15, ex. A)

III. STANDARD OF REVIEW

A party may bring either a factual or facial challenge to the court's jurisdiction in a motion to dismiss for lack of subject matter jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(1). See Turicentro, S.A. v. American Airlines Inc., 303 F.3d 293, 300, n. 4 (3d Cir.2002). A facial attack, such as presented in the case at bar, contests the sufficiency of the pleadings; a defendant contends that, even if all such allegations were true, they would be insufficient to establish the court's jurisdiction. When addressing a facial attack, the court must consider all the allegations of the complaint as true, and test the existence of jurisdiction at the time the complaint was filed and henceforth.⁶ Id. (citation omitted); Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1344 (Fed.Cir.2007) (citations omitted).

The Declaratory Judgment Act provides that,

in the case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.

28 U.S.C. § 2201(a). This "actual controversy" requirement refers to the types of "cases" and "controversies" justiciable under Article III. See MedImmune, Inc. v. Genentech, Inc., ___ U.S. ___, 127 S.Ct. 764, 771, 166 L.Ed.2d 604 (2007) (citation omitted). Article III standing requires "a plaintiff to allege personal injury fairly traceable to the defendant's allegedly unlawful conduct and likely to be redressed by the requested relief." Teva Pharm. USA, Inc. v. Novartis Pharm. Corp., 482 F.3d 1330, 1337 (Fed.Cir.2007) (citing Allen v. Wright, 468 U.S. 737, 751, 104 S.Ct. 3315, 82 L.Ed.2d 556 (1984)). Of these standing requirements, injury-in-fact is the most determinative. Id. (citing Schlesinger v. Reservists Comm. to Stop the War, 418 U.S. 208, 218, 94 S.Ct. 2925, 41 L.Ed.2d 706 (1974)). "[T]he Supreme Court maintains the necessity of avoiding issuing advisory opinions based on hypothetical facts." Id. (citing Elec. Bond & Share Co. v. Sec. & Exch. Comm'n, 303 U.S. 419, 58 S.Ct. 678, 82 L.Ed. 936 (1938)); see also MedImmune, 127 S.Ct. at 771 (the dispute must be "definite and concrete, touching the legal relations of parties having adverse legal interests," "real and substantial," and "admi[t] of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts") (citations omitted). Thus, the declaratory judgment plaintiff has the burden "under all the circumstances, [to] show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment."⁷ MedImmune, 127 S.Ct. at 771.

IV. DISCUSSION

A. Motions to Dismiss

In the present case, BSC asserts that it "intends to begin selling its Promus stent in the United States in 2008; FDA approval is pending," (Civ. No. 07-333, D.I. 1 at ¶ 18) Although BSC claims that FDA approval is imminent, BSC does not provide any details regarding the status of its application.⁸ On this record, J & J asserts that BSC has failed to demonstrate a present or even imminent dispute and either actual or imminent harm to BSC, since: (1) the FDA has not approved the Promus stents; (2) BSC is unable to identify with any certainty if or when FDA approval will be forthcoming; and (3) it is undisputed that BSC has not marketed or sold the Proms stent in the United States. (Id., D.I. 16 at 1-2)

As the Promus stent is merely a private-labeled version of Abbott's Xience V stent, the New Jersey litigations filed by J & J, accusing Abbott of infringing the '7286, '3286, and '473 patents at issue in this case, also concern the same stent at issue in this case. In the New Jersey cases, J & J asserts jurisdiction based upon, inter alia, Abbott's announcement that it sought FDA approval for its stent in 2007 and plans to launch the Xience V stent in the United States in the first half of 2008.⁹ (e.g., New Jersey Civ. A. No. 07-2477, ¶ 9) J & J can not have it both ways. If it was appropriate to file against Abbott, jurisdiction is equally appropriate over BSC in the present case; i.e., there is no reason to believe that BSC will not get FDA approval if Abbott does.¹⁰ The court finds, therefore, that it may properly exercise jurisdiction over this matter; defendant's motions to dismiss are denied.

B. Motions to Transfer

1. Standards

Under 28 U.S.C. § 1404(a), a district court may transfer any civil action to any other district where the action might have been brought for the convenience of parties and witnesses and in the interests of justice. Congress intended through § 1404 to place discretion in the district court to adjudicate motions to transfer according to an individualized, case-by-case consideration of convenience and the interests of justice. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988); Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192, 208 (D.Del.1998).

The burden of establishing the need to transfer rests with the movant "to establish that the balance of convenience of the parties and witnesses strongly favors the...