IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
MALLINCKRODT IP, MALLINCKRODT
HOSPITAL PRODUCTS INC., and SCR
PHARMATOP,
Plaintiffs,
v.
B. BRAUN MEDICAL INC.,
Defendant.
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C.A. No. 5:17-CV-1521-JLS
MALLINCKRODT IP and
MALLINCKRODT HOSPITAL PRODUCTS
INC.,
Plaintiffs,
v.
B. BRAUN MEDICAL INC.,
Defendant.
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C.A. No. 5:17-CV-2474-JLS
NEW PHARMATOP L.P.’S AND SCR PHARMATOP’S BRIEF IN O PPOSITION TO
B. BRAUN MEDICAL INC.’S MOTION TO DISMISS
SCR PHARMATOP UNDER RULE 12(b)(1)
Of Counsel:
Brian T. Moriarty (admitted pro hac vice)
HAMILTON, BROOK, SMITH &
REYNOLDS, P.C.
Seaport West
155 Seaport Boulevard
Boston, MA 02210
Attorneys for New Pharmatop L.P.
Keith R. Dutill
Marissa R. Parker
Chelsea Biemiller
STRADLEY RONON STEVENS & YOUNG, LLP
2005 Market Street, Suite 2600
Philadelphia, PA 19103-7018
Attorneys for Plaintiffs Mallinckrodt IP,
Mallinckrodt Hospital Products Inc., and SCR
Pharmatop; and New Pharmatop L.P.
Charles A. Weiss (admitted pro hac vice)
HOLLAND & KNIGHT LLP
31 West 52nd Street
New York, NY 10019
Attorneys for Plaintiff SCR Pharmatop
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TABLE OF CONTENTS
TABLE OF AUTHORITY .................................................................................................... II
I. INTRODUCTION ......................................................................................................1
II. STATEMENT OF FACTS ................................ ........................................................2
A. Braun’s Serial Notice Letters Triggered Multiple Complaints and 30-Months Stays ............2
B. SCR Pharmatop Is Pharmatop, Registration Number 407552702 .........................................4
C. The ’218 Patent ........................................................................................................5
D. The Transfer of the ’218 Patent from Pharmatop to New Pharmatop....................................6
E. Discovery Provided to Braun. ...................... .............................................................8
III. ARGUMENT .................................................................................................................9
A. Pharmatop Had Standing When the Initial Complaint Was Filed ....................................... 10
B. Pharmatop Had Standing when the Amended Complaint Was Filed .................................. 11
C. Only Pharmatop Assigned its Interests to New Pharmatop in 2017 .................................... 13
IV. CONCLUSION ........................................ ............................................................... 14
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TABLE OF AUTHORITY
Cases
Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010) ....................... 9, 12
Bd. of Trs. of Leland Stanford Jr. Univ. v. Roche Molecular Sys. Inc., 583 F.3d 832 (Fed. Cir.
2009) ........................................................................................................................... 12
Cadence Pharma. Inc. v. Excela Pharma. Sciences, LLC No. 11-733 2013 WL 11083853 (D.
Del. Nov. 14, 2013) ................................................................................................... 4, 6
Kehr Packages, Inc. v. Fidelcor, Inc., 926 F.2d 1406 (3d Cir. 1991)......................................9
Petruska v. Gannon Univ., 462 F.3d 294 (3d Cir. 2006) ........................................................9
Sicom Sys., Ltd. v. Agilent Techs., Inc., 427 F.3d 971 (Fed. Cir. 2005)...................................9
SiRF Tech. v. Int’l Trade Comm., 601 F.3d 1319 (Fed. Cir. 2010) .........................................9
W.L. Gore & Assoc., Inc. v C.R. Bard, Inc., 198 F. Supp. 3d 366, 372 (D. Del. 2016) ...... 9, 10, 11
WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257 (Fed. Cir. 2010) .............................. 10
Statutes
35 U.S.C. § 261 ................................................................................................................9
35 U.S.C. § 100(d) ................................ ......................................................................... 13
Rules
Fed. R. Civ P. Rule 12(b)(1) ...................... .......................................................................9
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I. INTRODUCTION
New Pharmatop, L.P. (“New Pharmatop”) and SCR Pharmatop (“Pharmatop”) opposes
B. Braun Medical Inc.’s (“Braun”) cross-motion to dismiss Pharmatop from this action, which
was filed by Pharmatop along with co-Plaintiffs Mallinckrodt IP Unlimited and Mallinckrodt
Hospital Products Inc. (collectively “Mallinckrodt”), for lack of standing. D.I. 62. Braun does
not seek to dismiss this action in its entirety, and its arguments seeking to dismiss Pharmatop are
misguided.
Braun’s standing arguments are all based on its observation that the named plaintiff in
this case is “SCR Pharmatop” whereas the September 15, 2017, assignment of the ’218 Patent
(the “2017 Assignment”) to New Pharmatop was from “SC Pharmatop.” D.I. 62 at 1-2. Braun
speculates that the one-letter difference in Pharmatop’s prefatory initials – “SC” versus “SCR” –
reflects two different underlying corporate entities, rather than two standard variants referring to
the exact same company. Based on that pure — and pl i ly incorrect — conjecture, Braun
further theorizes that if “SC Pharmatop” was the actu l owner of ’218 Patent, then “SCR
Pharmatop” never was, rendering “SCR Pharmatop” an improper plaintiff in this case. This non-
substantive word play wholly ignores the pertinent substance of Pharmatop’s standing.
As explained in the accompanying declaration of Mmle. Laurence Lessertois, the French
court-appointed legal representative of Pharmatop, “SCR Pharmatop” and “SC Pharmatop” are
(and have always been) the same company. Declaration of Laurence Lessertois (“Lessertois
Decl.”), attached hereto, at ¶ 9. That company was the sole owner of the ’218 Patent until it was
sold to New Pharmatop in September 2017. Id. ¶ 14.
Pharmatop is a French company that was formed in Versailles, France in 1996, by the
inventors of the ’218 Patent, Danièle Fredj and François Dietlin, and assigned registration
number 407 552 702. Id. Ex. B. The French registration document states its official name as
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being simply “Pharmatop.” Id. Pharmatop is a type of French partnership known as a “Societe
Civile” (S.C.), and it was formed to engage in pharm ceutical research (recherché, in French).
Id. ¶ 10. As a research company, Pharmatop referred to itself at times as a “Societe Civile de
recherché” and then began calling itself, at times, “Pharmatop SCR.” Id. ¶ 9. At other times, it
referred to itself as “Pharmatop SC” or simply “Pharm top.” Id. The use of these different
versions of the name Pharmatop does not change the fact that there is and was only one
company: Pharmatop. Id. Whether the company is called “SC Pharmatop,” “SCR Pharmatop”
or simply “Pharmatop,” it is beyond dispute that all of these names refer to the same corporate
entity – namely Pharmatop, bearing French corporate registration number 407 552 702. Id. ¶ 9.
As demonstrated by the recorded assignment documents, declarations of Pharmatop, and
other supporting documents, the ’218 Patent was owned solely by Pharmatop when this litigation
was filed in April 2017 and when the complaint was amended in July 2017. The ’218 Patent
continued to be owned exclusively by Pharmatop until it was transferred to New Pharmatop in
September 2017 by the 2017 Assignment. D.I. 56-1 Ex. A. Thus, there is no standing issue and
Braun’s motion should be denied.
II. STATEMENT OF FACTS
A. Braun’s Serial Notice Letters Triggered Multiple Complaints and 30-Months
Stays
By a letter dated February 21, 2017, Braun sent notice to Pharmatop and Mallinckrodt
that it had submitted a New Drug Application pursuant to section 505(b)(2) of the Hatch-
Waxman Amendment to the Federal Food Drug and Cosmetics Act (the “505(b)(2)
Application”) directed to a version of Mallinckrodt’s injectable acetaminophen product
OFIRMEV®. Braun’s notice letter also advised that Braun’s 505(b)(2) Application included a
so-called Paragraph IV certification as to the ’218 Patent. As Braun concedes, within forty-five
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days of the receipt of the first notice letter, Pharm top and Mallinckrodt brought this action
against Braun. D.I. 62 at 3. That lawsuit triggered a 30-month stay of FDA approval that
blocks the FDA from approving Braun’s 505(b)(2) Application until approximately August
2019.1
The April 4, 2017, complaint in this action identifies Plaintiff Pharmatop as “SCR
Pharmatop”: “Plaintiff SCR Pharmatop (‘Pharmatop’) is a business entity organized and existing
under the laws of France, having its headquarters a 10, Square St. Florentin, 78150 Le Chesnay,
France, As set forth herein, Pharmatop is the assignee of the ’218 patent.” D.I. 1 at ¶3.
Paragraph 14 recites, in part, “the ’218 patent . . . was duly and legally issued by the United
States Patent and Trademark Office (‘PTO’) on January 31, 2006. The named inventors assigned
the application which issued as the ’218 patent to Pharmatop.” Id. at ¶14. On July 28, 2017,
Mallinckrodt and Pharmatop filed an amended complaint gainst Braun that repeated the
allegations about SCR Pharmatop set forth above. See D.I. 24 at ¶¶ 3, 22.
Braun’s first notice letter did not, for whatever rason, certify to Mallinckrodt’s U.S.
Patent No. 9,399,012 (the “’012 Patent”), which was also listed in the Orange Book in February
2017. D.I. 1 ¶ 27. Braun subsequently amended its 505(b)(2) Application and filed a
certification to the ’012 Patent. See Braun Br., D.I. 14 at 6-7. It gave a new notice to
Mallinckrodt in April 2017, which triggered a second 30-month stay and the filing of a new
complaint. Id.
1 Braun’s motive in seeking dismissal of the complaint is clear. If the amended complaint is
dismissed and then refiled, Braun will seek to argue that the current 30-month stay is no
longer applicable and that it can launch its product upon FDA approval, even if the litigation
has not concluded.
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B. SCR Pharmatop Is Pharmatop, Registration Number 407552702
Pharmatop was organized in 1996 under French law as a “societe civile,” a type of
partnership vehicle similar to an LLC. See Lessertois Decl. at 8 and Ex. A (registration
statement). Such companies are at times abbreviated as “S.C.” But S.C. is not part of the legal
name of the company Pharmatop. See id. ¶ 9. Pharmatop, a very small company, was organized
with the specific object of conducting “research, creation and development of pharmaceutical,
cosmologic and chemical products” under the official name of “PHARMATOP.” See id. ¶ 10
and Ex. B. At times, Pharmatop referred to itself as a Societe Civile involved in research. For
example, in a 1998 corporate document, Pharmatop stated “S.C.R. PHARMATOP, Societe
Civile de recherché au capital del … .” The document also referenced Pharmatop’s unique
identifier – “407 552 702.” See id. Ex. C at 1, 3. Societe Civile de recherché and its
abbreviation, SCR, are not official French corporate terms, such as S.C., and are also not part of
the legal name of Pharmatop. See id. ¶ 9 and Ex. B.
U.S. Patent No. 6,028,222, which has been litigated extensively in Delaware and the
Federal Circuit, is also owned by Pharmatop. See Cadence Pharmaceutics Inc. v Excela
PharmSCI, Inc., 780 F.3d 1364, 1368 (Fed. Cir. 2015) (“SCR Pharmatop nd Cadence
Pharmaceuticals, Inc. . . . are the owner and exclusive licensee, respectively, of the ’222 and
’218 patents”); see also Lessertois Decl. at 15. The assignment for that patent was also from
“SCR Pharmatop” but the notarial records included with the assignment references Pharmatop’s
unique registration number 407 552 702. Id Ex. G. This is an additional record showing that
SCR Pharmatop is and always has been a reference to Pharmatop, societe civile, with the unique
identifier 407 552 702.
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Documents that recite “Pharmatop,” “S.C. Pharmatop,” “Pharmatop SC,” “SCR
Pharmatop,” and “Pharmatop SCR” refer to the same French company registered in Versailles,
France in May of 1996, under the name of PHARMATOP with registration number 407 552
702. Id. There is no company in France registered as “SCR Pharmatop.” Id. ¶¶ 9-12.2
C. The ’218 Patent
The initial application leading to the ’218 Patent was filed as a French patent
application 00/07231 (brevet) by the inventors of the ’218 Patent, Mme. Fredj and Mr. Deitlin
on June 6, 2000. See ’218 Patent, at 1; Lessertois Decl. ¶¶ 4, 13, 14 and Ex. E. The Priority
document, which was reviewed by the USPTO during prosecution of the ’218 patent and is
included in the file history for that patent, references Pharmatop and its unique French
corporate identification number 407 552 702. As stated by Mme. Lessertois, “Attached hereto
as Exhibit E is a copy of the certified French priority document for the ’218 Patent found in the
files of the USPTO for the ’218 Patent. This document is a legal record of Pharmatop.
Pharmatop, and only Pharmatop, has been the one and only legal owner of French priority
application since it was first filed.” Id. ¶ 13. The June 2000 French application was filed as a
PCT application PCT/FR01/01749 on June 6, 2001, and published as WO 01/93830 on 13 Dec
2001. See D.I. 63-1 ¶ 6.
On August 4, 2003, consistent with the practices of the USPTO, the 2001 French PCT
application PCT/FR01/01749 was filed in the USPTO as application 10/332,060 by the
inventors. The inventors assigned application 10/332,060 to Pharmatop through a written
2 While Pharmatop informally used “SCR” to mean Societe Civile for research, there is a
different, special type of French corporation used in international finance known as Societe
Capital De Risque,” which is not a “societe civile” and sometime is also abbreviated as
“SCR.” See Lessertois Decl. ¶12. That type of entity has no application to Pharmatop, a
French research company. Id.
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assignment. See D.I. 63-1 ¶ 6 Ex. D. As stated by Mme. Lessertois, “Attached hereto as
Exhibit F is a copy of an assignment of the U.S. patent application 10/332,060 from the inventors
to Pharmatop dated August 4, 2003, which was obtained from the USPTO. This document is a
legal record of Pharmatop. Application 10/332,060 issued as the ’218 patent. The ’218 patent
was exclusively and only owned by Pharmatop from the date it issued on January 31, 2006, until
September 15, 2017, when it was transferred to a company called New Pharmatop L.P.”
Lessertois Decl. ¶ 14.
The assignment of the 10/332,060 application from the inventors to Pharmatop was
recorded at the USPTO on August 4, 2003. SeeD.I. 56-1 Ex. B. No other assignment of the
’218 was recorded at the PTO from August 4, 2003 until October 6, 2017. Id.
Pharmatop’s ownership of the ’218 Patent prior to transfer in 2017 was also recognized
by the United States District Court for the District of Delaware. See Cadence Pharma. Inc. v.
Excela Pharma. Sciences, LLC, 2013 WL 11083853 (D. Del. Nov. 14, 2013) at para. 8.
(“Pharmatop owns the ‘222 and ‘218 Patents”). One of the inventors of the ’218 Patent, Mr.
Dietlin, testified at trial that he was a manager of Pharmatop, and that the ’218 Patent was owned
by Pharmatop. D.I. 63-8, Trial Tr. at pp. 151, 180 (May 20, 2013).
D. The Transfer of the ’218 Patent from Pharmatop to New Pharmatop
On May 10, 2017, Pharmatop and New Pharmatop reached an agreement, the Asset
Purchase Agreement (“APA”), to sell and transfer assets in the future. The transactions
contemplated by the APA concerned not only the ’218 Patent, but also many more assets not
relevant to this matter. See D.I. ¶ 56-1 at Ex. A; D.I. 63-9 ¶ 3. The 2017 Assignment states in
pertinent part, as follows:
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WHEREAS, the Assignors and the Assignee are parties to that certain
Asset Purchase Agreement, dated as of May 10, 2017 (the “Purchase
Agreement”);
WHEREAS, pursuant to the Purchase Agreement, the Assignors agreed to,
among other things, sell, convey, deliver, transfer and assign to the Assignee, all
of the Assignors’ right, title and interest to the S ller Patents, including the
Patents set forth on Exhibit A attached hereto; and
WHEREAS, the execution and delivery of this Agreement is required in
connection with the consummation of the transaction c templated by the
Purchase Agreement.
NOW, THEREFORE, in consideration of the promises and mutual
agreements set forth in the Purchase Agreement, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Assignee and Assignors hereby agree as follows:
Assignment of Seller Patents. The Assignors hereby p rpetually and
irrevocably sell, convey, deliver, transfer and assign to Assignee, free and clear of
all Liens, other than Permitted Liens, all of the Assignors’ right, title and interest
in, to and under the Seller Patents, including the Patents set forth on Exhibit A
[including US Patent 6,992,218]
The APA did not assign New Pharmatop any rights, only the assignment did. See D.I.
56-1 Ex. B; D.I. 63-9 ¶ 4; Lessertois Decl. ¶ 14. The 2017 Assignment is the legal instrument
that actually transferred ownership from Pharmatop to New Pharmatop. See D.I. 47 ex 1 (“The
Assignors hereby perpetually and irrevocably sell, convey, deliver, transfer and assign to
Assignee . . . .”) (emphasis added). As noted by the current and prior owners of the ’218 Patent,
the transfer of ownership occurred only on September 15, 2017. and not before. D.I. 63-9 ¶ 4;
Lessertois Decl. ¶ 14.
Braun states that S.C. Pharmatop was not the only assignor listed on that 2017
assignment. As noted on page 1 of the 2017 Assignment, the document assigned a number of
different patents and rights in a variety of different jurisdictions. See D.I. 56-1 at 4. Not all of
the patent rights transferred were solely owned by Pharmatop, so Pharmatop was not the only
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assignor for certain countries outside of the United States. See id. ¶ 4; Lessertois Decl. ¶ 14.
However, Pharmatop was the only assignor for the ‘218 patent. Id. Indeed, until the ‘218 Patent
was assigned to New Pharmatop on September 15, 2017the only owner of the ‘218 Patent was
Pharmatop as demonstrated by PTO assignment records and the owner’s declaration. D.I. 56-1
Ex. B.
On October 6, 2017, the PTO recorded that assignment from Pharmatop to New
Pharmatop. D.I. 56-1 Ex. B.
E. Discovery Provided to Braun.
Prior to filing its cross-motion to dismiss, Braun asked for an explanation of certain
information and the production of records concerning ownership. Counsel for New Pharmatop
suggested that Braun postpone its brief for a week so that New Pharmatop could search for and
produce additional documents. See D.I. 63-1 ¶ 8 Ex. F. Braun refused that offer. Following the
filing of Braun’s cross-motion, New Pharmatop produced over 1,000 pages of records to Braun
and provided further explanation. Id. New Pharmatop also asked that Braun enter into a
stipulation providing adequate and enforceable protection for any confidential documents
produced by New Pharmatop, but Braun refused that request as well. Id.
The redacted Assignment produced by New Pharmatop to Braun redacts only irrelevant
information concerning rights to patents other than the ’218 Patent, including rights in many
other countries. See D.I. 56-1 at 3. This is self-evident from the assignment document. See id.
Ex. A. Braun has no need to know what other countries are part of New Pharmatop’s transaction
with Pharmatop. Likewise, the APA contains highly confidential information that is not relevant
to standing and, even if it were relevant, cannot be produced without an enforceable protective
order. Id. at 4.
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III. ARGUMENT
“Standing is a constitutional requirement pursuant to Article III and it is a threshold
jurisdictional issue.” W.L. Gore & Assoc., Inc. v C.R. Bard, Inc., 198 F. Supp. 3d 366, 372 (D.
Del. 2016) (quoting Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1363 (Fed. Cir.
2010)) . The plaintiff bears the burden of persuasion to show it has standing. See Kehr Packages,
Inc. v. Fidelcor, Inc., 926 F.2d 1406, 1409 (3d Cir. 1991); Sicom Sys., Ltd. v. Agilent Techs.,
Inc., 427 F.3d 971, 976 (Fed. Cir. 2005).
“A challenge to subject matter jurisdiction under Fd. R. Civ P. Rule 12(b)(1) may be
either a facial or a factual attack.” W.L. Gore, 198 F. Supp. 3d at 372 (quoting Davis v. Wells
Fargo, 824 F.3d 333, 2016 WL 3033938, at *8 (3d Cir. 2016)). “The former challenges subject
matter jurisdiction without disputing the facts alleged in the complaint.” Id. “In contrast, when
subject matter jurisdiction is challenged based upon the sufficiency of jurisdictional facts, the
Court is ‘free to weigh the evidence and satisfy itself as to the existence of its power to hear the
case.’” W.L. Gore, at 372 (quoting Mortensen v. First Fed. Sav. & Loan Ass’n, 549 F.2d 884,
891 (3d Cir. 1977)). When considering a factual chllenge to standing, “no presumptive
truthfulness attaches to plaintiff’s allegations, and the existence of disputed material facts will
not preclude the trial court from evaluating for itself the merits of jurisdictional claims.”
Petruska v. Gannon Univ., 462 F.3d 294, 302 n.3 (3d Cir. 2006).
However, as here, when ownership is established throug an assignment, and that
assignment has been recorded at the USPTO, the burdn of going forward switches from the
plaintiff to the challenger. See 35 U.S.C. § 261. “The recording of an assignment ‘creates a
presumption of validity as to the assignment and places the burden to rebut such a showing on
one challenging the assignment.’” W.L. Gore, 198 F. Supp. 3d at 373 (quoting, SiRF Tech. v.
Int’l Trade Comm., 601 F.3d 1319, 1327–28 (Fed. Cir. 2010)).
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“[T]he touchstone of constitutional standing in a patent infringement suit is whether a
party can establish that it has an exclusionary right in a patent that, if violated by another, would
cause the party holding the exclusionary right to suffer legal injury.” WiAV Solutions LLC v.
Motorola, Inc., 631 F.3d 1257, 1265 (Fed. Cir. 2010). In other wo ds, standing can be
established by showing that the sole owner (or owners) of a patent is the plaintiff in a patent
litigation charging a defendant with infringing tha patent.
Based on the use of different versions of the name Pharmatop, Braun argues that
Pharmatop lacked standing to assert the counts associ ted with the ’218 Patent both when the
initial complaint was filed on April 3, 2017 and when the Amended Complaint was filed July 21,
2017. Further, because the 2017 Assignment lists more than one assignor, Braun speculates that
there must have been multiple owners of the ’218 Patent who were never properly joined in this
action. Each ground lacks merit.
A. Pharmatop Had Standing When the Initial Complaint Was Filed
It is black-letter law that absent certain types of exclusive licensing arrangements, the
owner (or owners) of the patent must be the party to bring a lawsuit alleging patent infringement.
W.L. Gore, 198 F. Supp. 3d at 372. Standing is established where the sole owner of a patent
files an action for infringement of its patent. See WiAV Solutions, 631 F.3d at 1265.
Here, as set forth in the Lessertois Declaration, Pharmatop is a French company
organized in the form of a “Societe Civile” – a type of French partnership vehicle. While that
company at times was referred to as SCR Pharmatop or SC Pharmatop, its legal name is simply
Pharmatop. Thus, all references to SCR Pharmatop or SC Pharmatop only refer only to
Pharmatop with the unique corporate identifier of 407 552 702.
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The French PCT/FR01/01749, which was filed as U.S. Patent Application 10/332,060
(leading to the ’218 Patent), was assigned by the inv ntors to “SCR Pharmatop” in 2003.
Pharmatop, registration number 407 552 702, was the owner and assignee of that application.
See Lessertois Decl. ¶ 14. The assignment was recorded at the USPTO. When the ’218 Patent
issued on January 31, 2006, it was owned solely by Pharmatop. See id. Pharmatop’s sole
ownership of the ’218 Patent existed on the date the complaint was filed on April 3, 2017, and
continued until September 15, 2017 – a date that Brun agrees is the “undisputed” date on which
Pharmatop transferred its interests in the ’218 Patent.
In contrast to the recorded assignments, declarations and supporting documents submitted
by plaintiffs Pharmatop and New Pharmatop, Braun has not even submitted a moving
declaration. In relies solely upon speculative attorney argument. Given that ownership of a
patent may be conclusively established by a written assignment, and here that assignment was
recorded at the USPTO, Braun was required to produce some proof other than speculation to
carry its burden. As noted, the recording of an assignment “creates a presumption of validity as
to the assignment and places the burden to rebut such a showing on one challenging the
assignment.” W.L. Gore, 198 F. Supp. 3d at 373.
Accordingly, as the sole owner of the ’218 Patent as of April 4, 2017, Pharmatop had
standing when this suit was filed and Braun’s arguments to the contrary should be rejected as
lacking merit.
B. Pharmatop Had Standing When The Amended Complaint Was Filed
Braun argues that when Pharmatop, along with Mallinckrodt, filed the amended
complaint on July 28, 2017 (D.I. 24), claiming that Braun infringed the ’218 Patent, Pharmatop
was not the sole and exclusive owner of the ’218 Patent and therefore lacked standing as to the
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counts associated with the ’218 Patent. D.I. 62 at 7, 10, 13, 15. Braun argues that because New
Pharmatop and Pharmatop entered into the APA on May 10, 2017, Pharmatop was not an
exclusive owner after May 10, 2017, but somehow was a co-owner of the ’218 Patent with New
Pharmatop and New Pharmatop was required to be named s a co-plaintiff.
This argument is also without merit. New Pharmatop did not obtain an interest in the
’218 Patent until it was sold and formally assigned to New Pharmatop on September 15, 2017.
As the parties to the transaction both unequivocally state, no interests in the ’218 Patent passed
to New Pharmatop via the APA. D.I. 63-9 ¶ 3-4; Lessertois Decl. at ¶ 14. Nor would one expect
that to occur. Every corporate agreement is followed by a closing at which money changes
hands and assets are transferred. A party is not going to transfer ownership of a valuable asset
until it is paid at closing.
Here, the 2017 Assignment states that the APA contains an agreement to assign patent
rights in the future. The law is clear that “contracts that obligate th owner to grant rights in the
future do not vest legal title to the patents in the assignee. “ Abraxis, 625 F.3d at 1364-65; Bd. of
Trs. of Leland Stanford Jr. Univ. v. Roche Molecular Sys. Inc., 583 F.3d 832, 841-42 (Fed. Cir.
2009). Thus, New Pharmatop had no ownership interest in the ’218 Patent on July 21, 2017, and
was not required to be named as plaintiff. Pharmatop s ill retained full ownership of the ’218
Patent and had standing to file the amended complaint. Only upon execution of the 2017
Assignment in September did New Pharmatop become the owner of the ’218 Patent. And
promptly following that assignment, New Pharmatop moved to substitute as Plaintiff. D.I. 56.
Moreover, while the APA did not assign the ’218 Patent to New Pharmatop, even if it
did, New Pharmatop would be deemed a party to the Am nded Complaint as a matter of law.
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See 35 U.S.C. § 100(d) (“The word ‘patentee’ includes not only the patentee to whom the patent
was issued but also the successors in title to the pat ntee.”)3
C. Only Pharmatop Assigned its Interests to New Pharmatop in 2017
Braun next claims that because the 2017 Assignment names S.C. Pharmatop as an
assignor as well as three additional assignors (inventors Fredj and Dietlin, and a French company
New Pharma), there must have been more than one ownr of the ’218 Patent at the time the
lawsuit was filed. Braun goes on to wrongly suggest that there is no standing because these three
parties were not listed as plaintiffs in the complaint or amended complaint.
Both the new owner of the ’218 Patent, New Pharmatop, and the old owner, Pharmatop,
have submitted declarations stating that only Pharmatop was the exclusive and sole owner of the
’218 Patent up to September 15, 2017, and that Pharmatop assigned its interests to New
Pharmatop on September 15, 2017. See D.I. 56-1 Ex. A. Indeed, Braun concedes that it is
“undisputed” that Pharmatop transferred its interests a of September 15, 2017. D.I. 62 at 10.
As demonstrated by the 2003 assignment from the inventors to Pharmatop and the
USPTO recordation records, there were no other owners of the ’218 Patent other than Pharmatop
from the date the ’218 Patent issued on January 31, 2006, up through September 15, 2017. In
other words, when the complaint was filed in April 2017 and the amended complaint filed in July
2017, Pharmatop was the sole and exclusive owner of the ’218 Patent and unquestionably had
standing to bring the case. The other parties listed in the 2017 Assignment assigned other rights
to New Pharmatop which did not include rights in the ’218 Patent because none of those three
parties had any such rights in the ’218 Patent. D.I. 56-1 at 4; Lessertois Decl. ¶ 14.
3 As explained in New Pharmatop’s motion to substitute (D.I. 56), the law is clear that where a
party becomes the owner of a patent-in-suit during the pendency of litigation pursuant to
Federal Rule of Civil Procedure 25(c). Multiple cases from this district confirm the propriety
of substitution and maintenance of standing in such circumstances. See id.
Case 5:17-cv-01521-JLS Document 64 Filed 11/14/17 Page 16 of 18
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Pharmatop’s sole ownership from 2003 to 2017 is also demonstrated by the 2003
assignment, which was recorded. Because that assignment was duly recorded at the USPTO,
Braun was required to produce some proof other than speculation. It did not, and therefore its
standing argument should be rejected as lacking merit.
IV. CONCLUSION
Pharmatop owned the ’218 Patent from issuance until September 5, 2017, when it, alone,
transferred all of its rights to New Pharmatop. Thus, there was standing in the case from the
filing of the case, through the July 2017 amendment of the complaint and continuing until today.
Braun’s cross motion to dismiss for lack of standing should be denied.
Dated: November 14, 2017
/s/ Marissa R. Parker
Of Counsel:
Brian T. Moriarty (admitted pro hac vice)
HAMILTON, BROOK, SMITH &
REYNOLDS, P.C.
Seaport West
155 Seaport Boulevard
Boston, MA 02210
Attorneys for New Pharmatop L.P.
Keith R. Dutill
Marissa R. Parker
Chelsea Biemiller
STRADLEY RONON STEVENS & YOUNG, LLP
2005 Market Street, Suite 2600
Philadelphia, PA 19103-7018
Attorneys for Plaintiffs Mallinckrodt IP,
Mallinckrodt Hospital Products Inc., and SCR
Pharmatop; and New Pharmatop L.P.
Charles A. Weiss (admitted pro hac vice)
HOLLAND & KNIGHT LLP
31 West 52nd Street, New York, NY 10019
Attorneys for Plaintiff SCR Pharmatop
Case 5:17-cv-01521-JLS Document 64 Filed 11/14/17 Page 17 of 18
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CERTIFICATE OF SERVICE
On November 14, 2017, I caused the foregoing document to be filed using the CM/ECF
system, which will send notification of such filing to all counsel of record registered with the
CM/ECF system.
/s/ Marissa R. Parker
Marissa R. Parker
# 3389209
Case 5:17-cv-01521-JLS Document 64 Filed 11/14/17 Page 18 of 18
