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Abbott Laboratories v. Church & Dwight

October 23, 2007


The opinion of the court was delivered by: Matthew F. Kennelly, District Judge


Defendant Church & Dwight ("C&D") has moved the Court to transfer this patent infringement suit, brought by plaintiff Abbott Laboratories ("Abbott"), to the United States District Court for the District of New Jersey pursuant to 28 U.S.C. § 1404(a). Litigation between these two parties, in reversed roles, is ongoing there. The claims of patent infringement Abbott asserts in this Court were the subject of a counterclaim that the New Jersey district court dismissed. On that basis, C&D also seeks to have this Court dismiss one count of Abbott's complaint under the doctrine of issue preclusion. For the reasons set forth below, the Court denies C&D's motion to transfer and grants its motion to dismiss Count 3 of Abbott's complaint.


This case concerns patents that cover lateral flow immunology devices and methods of use for testing, among other things, pregnancy and ovulation. Abbott alleges C&D has infringed U.S. Patent Nos. 5,654,162 (the '162 patent) and 6,020,147 (the '147 patent), of which Abbott is the exclusive licensee. Abbott has joined the owner of these patents, SurModics, Inc., as an involuntary plaintiff under Federal Rule of Civil Procedure 19(a). Abbott also alleges that C&D has infringed U.S. Patent No. 6,534,320 (the '320 or "Detergent" patent), of which Abbott says it is the exclusive licensee "as it relates to Church & Dwight." Compl. at 3. Abbott has likewise joined Inverness Medical Switzerland GmbH ("Inverness"), the owner of the '320 patent, as an involuntary plaintiff.

In April 2005, C&D filed suit against Abbott in the U.S. District Court for the District of New Jersey. The case was assigned to the Hon. Garrett E. Brown, Jr., chief judge of that district. In that suit, C&D alleged Abbott had infringed three patents known as the Charleton patents. Abbott asserted a counterclaim against C&D for patent infringement, including all three patents that are the focus of Abbott's suit in this Court. In July 2006, Abbott sought to file an amended counterclaim under Rule 19 that would have joined Inverness, which also owns two other Detergent patents not at issue in this case, as a necessary party. In October 2006, Chief Judge Brown denied Abbott's motion and granted C&D's cross-motion to dismiss the counterclaim. Chief Judge Brown held that Abbott lacked standing under 35 U.S.C. § 281 to sue for infringement of the '320 patent, which it had assigned to Inverness in 2003. He also rejected Abbott's belated attempt to join Inverness under Rule 19, citing precedent from the U.S. Court of Appeals for the Federal Circuit that requires dismissal if the original plaintiff in a patent infringement suit lacks standing at the start of the lawsuit.

Abbott has now filed in this Court a new suit alleging infringement of the '320 patent and the '162 and '147 patents. This time, it has named the patents' owners at the outset of the case. Before the Court are C&D's motions to transfer the case to the District of New Jersey and to dismiss on issue preclusion grounds Abbott's claim of infringement of the '320 patent.


A. C&D's Motion for Transfer to the District of New Jersey

C&D asks this Court to transfer Abbott's suit to the U.S. District Court for the District of New Jersey pursuant to 28 U.S.C. § 1404(a), which provides that "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." "The movant . . . has the burden of establishing, by reference to particular circumstances, that the transferee forum is clearly more convenient." Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).*fn1 In ruling on a motion for transfer, the Court considers the § 1404(a) criteria "in light of all the factors of the case," an inquiry that "necessarily involves a large degree of subtlety and latitude," including over how much weight to give each of the statutory criteria. Id. at 219 (citing Christopher v. Am. News Co., 176 F.2d 11 (7th Cir. 1949), and Brown v. Grimm, 624 F.2d 58, 59 (7th Cir. 1980)); see also, Van Dusen v. Barrack, 376 U.S. 612, 622 (1964).

1. Venue

Abbott's argument against transfer on the grounds that venue is improper in the District of New Jersey is unavailing. Abbott asserts that that court lacks jurisdiction over Inverness, an involuntary plaintiff in this suit and therefore this action could not have been brought originally in that district. The provision under Rule 19 for joining a person (in practice, typically a patent owner) as an involuntary plaintiff is available "only if the person is beyond the jurisdiction of the court, and is notified of the action, but refuses to join." 7 CHARLES ALAN WRIGHT ET AL., FEDERAL PRACTICE AND PROCEDURE § 1606, at 73 (3d ed. 2001) (citing Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459 (1926)). That is, joinder of an involuntary plaintiff is triggered by a lack of jurisdiction over a party whose participation is desirable for a just, efficient result or, as in this case, is necessary for the original plaintiff to have standing to sue. Under the circumstances, it makes no sense to use lack of jurisdiction as a basis to deny transfer.

The Court therefore turns to the other two factors under § 1404(a): the convenience of the parties and witnesses and the interest of justice.

2. Convenience of the Parties and Witnesses

The factors the Court must evaluate with regard to the convenience of the parties and witnesses are: "(1) the plaintiff's choice of forum; (2) the situs of material events; (3) the relative ease of access to sources of proof; (4) the convenience of the witnesses; and (5) the convenience of the parties of litigating in the respective forums." ...

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