Judge Sleet Denies Motion to Dismiss for Lack of Subject Matter Jurisdiction
October 5, 2016
Publication| Intellectual Property
In AstraZeneca AB v. Aurobindo Pharma Ltd., et al., C.A. No. 14-664-GMS (D. Del. Sept. 15, 2016), Judge Sleet denied defendants Wockhardt BIO AG and Wockhardt USA LLC’s (collectively “Wockhardt”) motion to dismiss for lack of subject matter jurisdiction. In the motion to dismiss, Wockhardt noted that it had amended the certification included in its ANDA submission, converting it from a Paragraph IV certification to a Paragraph III certification. In light of this amendment, Wockhardt claimed that the parties were no longer engaged in a “highly artificial act of infringement” because Wockhardt only sought approval of its ANDA following the expiration of the patent at issue. Because Wockhardt was no longer challenging the patent at issue, Wockhardt argued that the Court lacked subject matter jurisdiction over the claims of infringement.
The Court disagreed with Wockhardt, commenting that the alleged infringing activities were “capable of repetition,” thus defeating mootness claims. Judge Sleet noted that patent owners would be unable to obtain complete relief if conversion of a Paragraph IV certification to another designation automatically deprived the Court of subject matter jurisdiction. Further, Judge Sleet pointed to the timing of Wockhardt’s amended certification following the Court’s denial of the defendants’ motion to stay the action, and to Wockhardt’s refusal to enter into a stipulation preventing it from amending the certification back to Paragraph IV in the future, as evidence that the parties will likely face a similar controversy.
Key Points: This case highlights the Court’s unwillingness to dismiss cases for lack of subject matter jurisdiction if the controversy is capable of repetition.