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EVANS MED. LTD. v. AMERICAN CYANAMID CO.

November 21, 1997

EVANS MEDICAL LTD., MEDEVA PLC, SMITHKLINE BEECHAM BIOLOGICALS S.A., SMITHKLINE BEECHAM BIOLOGICALS MANUFACTURING S.A. and SMITHKLINE BEECHAM CORPORATION, Plaintiffs, against AMERICAN CYANAMID COMPANY, TAKEDA CHEMICAL INDUSTRIES, LTD. and AMERICAN HOME PRODUCTS CORPORATION, Defendants. AMERICAN CYANAMID COMPANY, TAKEDA CHEMICAL INDUSTRIES, LTD. and AMERICAN HOME PRODUCTS CORPORATION, Counterclaim Plaintiffs, - against - EVANS MEDICAL LTD., MEDEVA PLC, GLAXO WELLCOME PLC, GLAXO WELLCOME INC., SMITHKLINE BEECHAM BIOLOGICALS S.A., SMITHKLINE BEECHAM BIOLOGICALS MANUFACTURING S.A. and SMITHKLINE BEECHAM CORPORATION, Counterclaim Defendants


The opinion of the court was delivered by: CONNER

 Conner, Senior D. J.

 Plaintiffs Evans Medical Ltd. ("Evans"), Medeva plc ("Medeva"), and SmithKline Beecham Biologicals S.A., SmithKline Beecham Biologicals Manufacturing S.A. and SmithKline Beecham Corporation (collectively, "SmithKline"), brought suit against defendants American Cyanamid Company ("Cyanamid"), Takeda Chemical Industries, Ltd. ("Takeda") and American Home Products Corporation ("AHP") in February 1995, for alleged infringement of three patents (United States Patents 5,273,052, 5,438,120 and 5,648,080) in the "Human Vaccine Field." Defendants bring counterclaims against Evans, Medeva, SmithKline, Glaxo Wellcome Inc. ("GWI") and Glaxo Wellcome plc ("GWP"), (together, "Glaxo"), *fn1" pursuant to FED. R. CIV. P. 13 and the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., alleging that the patents at issue are invalid, unenforceable and not infringed. Glaxo now moves to dismiss the counterclaims pursuant to FED. R. CIV. P. 12(b)(1), on the grounds that this Court lacks subject matter jurisdiction under the Declaratory Judgment Act.

 For the following reasons, Glaxo's motion is granted.

 BACKGROUND

 The patents at issue in this action relate to a pertussis antigen for use in vaccines to immunize children against whooping cough. In 1991, Evans secured from TWF the rights to the use of the antigen in the human vaccine field. In 1994, TWF expressly assigned to Evans the series of applications which resulted in issuance of the three patents in suit. At the same time, Evans granted back to TWF an "exclusive license to use and exercise the Patent Rights outside the Human Vaccine Field." Subsequently, Evans exclusively licensed to SmithKline the right to make, use and sell for use in humans vaccines containing the antigen covered by the '052, '120 and '080 Patents.

 On February 2, 1995, plaintiff Evans sued defendants Cyanamid and Takeda in the United States District Court for the Northern District of Texas for alleged infringement of the '052 Patent. On March 26, 1996, the court transferred the case to the Southern District of New York, on the grounds that it lacked personal jurisdiction over Takeda. On September 17, 1996, Evans filed a second amended complaint, adding Medeva as plaintiff and asserting a claim for infringement of the '120 Patent. On June 18, 1997, Evans and Medeva filed a third amended complaint, adding SmithKline as plaintiff and AHP as defendant. On August 14, 1997, plaintiffs filed a fourth amended complaint, asserting a claim for infringement of the '080 Patent.

 In their answer to the amended complaint, defendants asserted counterclaims against plaintiffs, TWF and ultimately, Glaxo, *fn2" alleging that the patents are invalid and unenforceable.

 DISCUSSION

 I. Motion to Dismiss and Declaratory Judgment Standards

 In considering Glaxo's motion to dismiss for lack of subject matter jurisdiction, the Court accepts as true the facts alleged by defendants and draws all inferences in their favor. See Kaluczky v. City of White Plains, 57 F.3d 202, 206 (2d Cir. 1995). Defendants, however, bear the burden of showing that the Court has jurisdiction. Int'l Medical Prosthetics Research Assoc. v. Gore Enterprise, 787 F.2d 572, 575 (Fed. Cir. 1986). The nature of this obligation varies in accordance with the procedural posture of the litigation. Prior to discovery, a party may defeat a motion to dismiss by pleading in good faith legally sufficient allegations of jurisdiction, without having to state facts that "if credited by [the ultimate trier of fact], would suffice to establish jurisdiction." Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990). Accord Koehler v. Bank of Bermuda Ltd., 101 F.3d 863, 865 (2d Cir. 1996). In deciding a motion to dismiss for lack of subject matter jurisdiction, the Court may consider evidentiary matters outside the pleadings, such as affidavits and exhibits. Indium Corp. of America v. Semi-Alloys, Inc., 781 F.2d 879, 884 (Fed. Cir. 1985). See also Bristol Meyers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 1996 U.S. Dist. LEXIS 1753, No. 95 Civ. 8833, 1996 WL 71492, at *5 (S.D.N.Y. Feb. 20, 1996) (relying on pleadings, affidavits, and correspondence).

 The purpose of the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., is to protect a threatened party from the uncertainty of impending litigation. Shell Oil Co. v. Amoco Corp., 970 F.2d 885, 889 (Fed. Cir. 1989). If the threat is immediate and real, and all other jurisdictional requirements are met, a court may hear a case for declaratory judgment, in order to determine the rights of an interested party. See, e.g., EMC Corp. v. Norand Corp., 89 F.3d 807, 810 (Fed. Cir. 1996), cert. denied, U.S. , 117 S. Ct. 789, 136 L. Ed. 2d 730 (1997). According to section 2201(a):

 
In a case of actual controversy within its jurisdiction . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights . . . of any interested party seeking such declaration . . . .

 28 U.S.C. § 2201(a). A declaratory judgment action therefore is not justiciable if it does not present a case or controversy. Shell Oil, 970 F.2d at 887. "In general, the presence of an 'actual controversy' within the meaning of the statute depends on 'whether the facts alleged . . 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.'" EMC Corp., 89 F.3d at 810 (quoting Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273, 61 S. Ct. 510, 512, 85 L. Ed. 826 (1941)). Even where there exists jurisdiction, "the exercise of that jurisdiction [by a district court] is discretionary." Spectronics v. H.B. Fuller Co., 940 F.2d 631, 634 (Fed. Cir. 1991). To maintain jurisdiction, a case or ...


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