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Glycobiosciences, Inc v. Nycomed Us

February 15, 2012

GLYCOBIOSCIENCES, INC., PLAINTIFF,
v.
NYCOMED US, INC. N/K/A FOUGERA PHARMACEUTICALS, INC., PHARMADERM, AND JAGOTEC AG, DEFENDANTS.



The opinion of the court was delivered by: Seybert, District Judge:

MEMORANDUM & ORDER

Plaintiff GlycoBioSciences, Inc. ("Plaintiff" or "Glyco") commenced this action on March 17, 2011, asserting two causes of action for patent infringement under 35 U.S.C. § 271. Presently pending before the Court is Defendant Nycomed US, Inc. n/k/a Fougera Pharmaceuticals, Inc.'s ("Defendant" or "Fougera")*fn1 motion to dismiss, transfer, or stay the proceeding. For the following reasons, Defendant's motion to dismiss is GRANTED.

BACKGROUND

Plaintiff is a research pharmaceutical company located in Ontario, Canada that owns Unites States Letters Patents 5,897,880 (the "'880 Patent") and 6,723,345 (the "'345 Patent"). (Compl. ¶ 3.) Defendant is a pharmaceutical company with its principal place of business in New York. (Compl. ¶ 4.) Through its New Jersey-based unincorporated division PharmaDerm, Defendant sells an FDA-approved pharmaceutical product called SOLARAZE® Gel throughout the United States. (Compl. ¶ 4; Bryant Aff. ¶¶ 3, 5.) There are six patents that cover SOLARAZE® that are owned by Jagotec AG and exclusively licensed to Defendant (the "SOLARAZE® Patents"). (Bryant Aff. ¶¶ 7-8.)*fn2 Jagotec is a company existing under Swiss law with its principal place of business in Switzerland. (Compl. ¶ 6.)

The parties' relationship began in June 2010 when Kevin Drizen, President of Glyco, contacted Ann Bryant, the Vice President of Business Development for Defendant, at her office in New Jersey to discuss the validity and proper inventorship of the SOLARAZE® Patents. (Bryant Aff. ¶¶ 10-11, Drizen Aff. ¶ 7.) These communications were less than amicable. On November 5, 2010, Mr. Drizen filed a petition for reexamination of one of the SOLARAZE® Patents and informed Ms. Bryant that he intended to file petitions for the reexamination of the other five SOLARAZE®

Patents.*fn3 (Bryant Aff. ¶ 12; Drizen Aff. ¶ 8.) During the following months, Mr. Drizen continued to contact Ms. Bryant to discuss, among other things, "possible resolutions to the Solaraze patents, inventorship, etc." (Bryant Aff. ¶ 15; Drizen Aff. ¶ 8.)

On March 7, 2011, Mr. Drizen forwarded Ms. Bryant an email from Glyco's counsel stating that Defendant's SOLARAZE® Gel infringed on Glyco's '880 Patent. (Bryant Aff. ¶ 18; Drizen Aff. ¶ 10.) The following day, Mr. Drizen forwarded Ms. Bryant another email stating that Glyco "will file infringement and inventor claim [sic] on Monday," March 14, 2011, because "[y]our attorneys expressed no interest in speaking any further in a serious fashion to our attorney" and Glyco has "wasted enough time attempting to reason with you." (Bryant Aff. Ex. 9.)*fn4

On March 11, 2011, Defendant commenced a declaratory judgment action in the United States District Court for the District of New Jersey (the "New Jersey Action") seeking a declaration of non-infringement of the '880 Patent. (Sum-Ping Decl. Ex. 1.) Then, on March 17, 2011, Glyco commenced the present action (the "New York Action") against Defendant asserting claims for infringement of the '880 and '345 Patents. (Docket Entry 1.) On March 31, 2011, Defendant filed an amended complaint in the New Jersey Action ("New Jersey Amended Complaint") that added a claim for a declaration of non-infringement of '345 Patent. (Sum-Ping Decl. Ex. 2.)

Presently pending before the Court is Defendant's motion to dismiss, transfer, or stay the New York Action in favor of the first-filed New Jersey Action. (Docket Entry 14.)*fn5

DISCUSSION

Where there are two competing federal lawsuits, "[t]he general rule, and the rule in the Second Circuit, is that 'as a principle of sound judicial administration, the first suit should have priority,' absent special circumstances." Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir. 1989) (quoting William Gluckin & Co. v. Int'l Playtex Corp., 407 F.2d 177, 178 (1969)); In re Vertical Sys., Inc., 435 F. App'x 950, 951 (Fed. Cir. 2011) ("The general rule favors the first-filed action." (citing Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), overruled in part on other grounds by Wilton v. Seven Falls Co., 515 U.S. 277, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995))).*fn6 This principle, known as the "first-filed rule," "permits the transfer or dismissal of subsequently commenced litigation involving the same parties and the same issues when both suits are pending in federal courts." See Kytel Int'l Grp., Inc. v. Rent-A-Center, Inc., 43 F. App'x 420, 422 (2d Cir. 2002) (citing First City Nat'l Bank & Trust Co. v. Simmons, 878 F.2d 76, 77, 79 (2d Cir. 1989)); see also Spotless Enters. Inc. v. The Accessory Corp., 415 F. Supp. 2d 203, 205 (E.D.N.Y. 2006).

The Court will first discuss whether the first-filed rule applies here. Then it will address whether special circumstances exist to justify departing from the first-filed rule in this case.

I. Applicability of First-Filed Rule

"In determining if the first-filed rule applies, the court must carefully consider whether in fact the suits are duplicative." Alden Corp. v. Eazypower Corp., 294 F. Supp. 2d 233, 235 (D. Conn. 2003) (citing Curtis v. Citibank, N.A., 226 F.3d 133, 133 (2d Cir. 2000)). Suits are duplicative if they "have identical or substantially similar parties and claims." Spotless, 415 F. Supp. 2d at 205-06 (citations omitted). Plaintiff argues that the actions are not duplicative because "[a]lthough the action in New Jersey was filed on March 11, that ...


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