In a recent memorandum opinion, Judge Richard G. Andrews denied a motion to dismiss filed by a sublicensee of the plaintiff’s soybean technology. Bayer Cropscience AG v. Dow Agrosciences LLC , C.A. No. 12-256-RGA (D. Del. Dec. 6, 2012). The sublicensee first argued that dismissal was appropriate pursuant to Rule 12(b)(7) because the plaintiff failed to join a necessary and indispensable party – the plaintiff’s licensee who was permitted use of the technology for certain purposes not including commercialization, and who in turn sublicensed the use of the technology to the defendant who sought to commercialize the technology. Id. at 2-3, 4. The Court agreed that, at first glance, it appeared that the plaintiff’s licensee was an “absent party [who] will suffer some loss or be put at risk of suffering such loss if not joined.” Id. at 4-5 (quoting Koppers Co., Inc. v. Aetna Cas. & Sur. Co., 158 F.3d 170, 175 (3d Cir. 1998)). The Court found, though, that the defendant’s interests were aligned with the plaintiff’s licensee such that it was “perfectly capable of protecting their joint interests.” Id. at 5-6. Moreover, because the agreement between the plaintiff and the plaintiff’s licensee included an arbitration provision, the Court found it unlikely that joining the plaintiff’s licensee would result in the Court ever ruling on the dispute between the plaintiff and the plaintiff’s licensee, anyway, which the Court found “mitigates the harm or risk of harm that would flow from [the plaintiff’s licensee’s] absence.” Id. at 6-7.
The Court also rejected the argument that the plaintiff’s complaint failed to state a claim because the defendant’s “actions in connection with the soybean technology are validly licensed, and therefore, it cannot infringe . . . .” Id. at 3. As the Court explained, “[t]his argument . . . asserts a factual defense. It is not an attack on the pleadings and is misplaced within the context of a 12(b)(6) motion.” Id.