Chief Judge Sleet recently denied a motion to dismiss, or in the alternative to stay, a patent interference claim relating to oral contraceptives. Bayer Intellectual Property GmbH, et al. v. Warner Chilcott Co., LLC, et al., C.A. No. 12-1032-GMS (D. Del. Dec. 9, 2013). The defendant in the case, Warner Chilcott, argued that the Court lacked subject matter jurisdiction over the claim because the plaintiff, Bayer, failed to allege a priority dispute. The Court, though, found that Warner Chilcott “fundamentally misconstrue[d] the prerequisites to an interference action under § 291.” Id. at 5. As the Court explained, section 291 subject matter jurisdiction does not require allegations of a priority dispute. Instead, section 291 subject matter jurisdiction requires allegations of interfering patents: “Under any construction of § 291, it is impossible to conceive how it could be any clearer that interference between patents is a sine qua non of an action under § 291.” Id. (quoting Albert v. Kevex Corp., 729 F.2d 757, 760 (Fed. Cir. 1984)). The Court also disagreed with Warner Chilcott’s argument that Bayer failed to allege a priority dispute, since the operative complaint alleged that Bayer’s ‘940 patent was prior art to Warner Chilcott’s ‘984 patent, and prayed for a declaration that the inventors of Bayer’s patent were the first inventors of the subject matter covered by the two patents. Id. at 6.
The Court also denied Warner Chilcott’s motion in the alternative for a stay of the interference claim. The Court found that the “simplification of issues” factor weighed “heavily” against a stay because the New Jersey litigation, where Warner Chilcott was litigating against generic manufacturers, did not involve Bayer. As a result, the New Jersey “litigation cannot bind Bayer if Warner Chilcott’s ‘984 patent is found valid in light of Bayer’s ‘940 patent.” Id. at 7. The Court found that the other factors did not counterbalance the extent to which the “simplification of issues” factor weighed against a stay. Id. at 7-8.