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Judge Stark denies motion to dismiss based on lack of subject matter resulting from allegedly abandoned application.

Judge Leonard P. Stark recently denied a defendant’s post-trial motion to dismiss an infringement action for lack of subject matter jurisdiction based on the alleged expiration of the patent-in-suit. Avanir Pharmaceuticals, Inc., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-704-LPS (D. Del. Oct. 25, 2013). The defendant argued, and the Court agreed, that the original priority application lapsed and was abandoned before a continuation application was filed. The plaintiff attempted to retroactively fix this problem by filing an ePetition through a reissue patent, in an attempt to get behind certain alleged prior art, but the defendant argued that the fix was unsuccessful because the plaintiff failed to file a terminal disclaimer, as required. The Court agreed that a terminal disclaimer was required, and therefore left the plaintiff with a difficult dilemma: “[T]he [reissued] patent may either (i) claim priority back to [the original] application’s filing date – and then its terminal period must be disclaimed, pursuant to § 1.137(d)(2), meaning the [reissued] patent would have expired on June 9, 2012; or (ii) claim priority to [a later] application’s filing date – and would not expire until the end of its full term, on January 26, 2016.” Id. at 21. While the plaintiff argued that neither outcome was dictated by these circumstances, the Court found that the existence of the plaintiff’s option to elect the later priority claim, regardless of how it might ultimately impact the Court’s validity assessment, means “the Court continues to have subject matter jurisdiction over the parties’ disputes relating to the [reissued] patent.” Id. at 22.

Avanir Pharmaceuticals, Inc., et al. v. Actavis South Atlantic LLC, et al., C.A. No. 11-704-LPS (D. Del. Oc…

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