It’s Not Easy to Get into the Federal Circuit - In re ICM, Inc., In re Foundations Worldwide, Inc., Momenta Pharm., Inc. v. Amphastar Pharm, Inc., Momenta Pharm., Inc. v. Teva Pharm USA, Inc.

by McDermott Will & Emery
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In addressing four cases requesting action regarding jurisdiction or venue transfer, the U.S. Court of Appeals for the Federal Circuit scored a Texas hat trick and bounced four cases out of the Court, denying two petitions for mandamus and dismissing two appeals for lack of jurisdiction.  In re ICM, Inc., Case No. 13-152 (Fed. Cir., Nov. 21, 2013) (Reyna, J.); In re Foundations Worldwide, Inc., Case No. 13-159 (Fed. Cir., Nov. 21, 2013) (Reyna, J.); Momenta Pharm., Inc. v. Amphastar Pharm, Inc., Case No. 13-1579 (Fed. Cir., Nov. 21, 2013) (Reyna, J.); Momenta Pharm., Inc. v. Teva Pharm USA, Inc., Case No. 13-1580 (Fed. Cir., Nov. 21, 2013) (Reyna, J.).

In In re ICM, Inc., ICM sought a writ of mandamus to vacate statements made by the Multidistrict Litigation (MDL) Court concerning a recommendation to transfer venue following remand to the original court.  ICM filed a declaratory judgment action in Kansas.  The patentee then filed an infringement action in New York.  Both cases were sent to the MDL in Indiana.  The patentee filed a motion to dismiss the declaratory judgment claim or alternatively to transfer it to New York.  The MDL court dismissed some of the declaratory judgment claims and noted that upon completion of the MDL proceedings it would “be in the interest of justice to transfer the Kansas action.”  ICM sought to strike those statements.

The Federal Circuit noted that mandamus was a drastic remedy, the MDL court did not have jurisdiction to transfer the declaratory judgment case and ICM would have the opportunity to challenge any request to transfer the case after it is remanded to Kansas.  Accordingly, the Federal Circuit stated “it would be inappropriate to grant this extraordinary remedy merely to strike a recommendation in an opinion that does not rise to the level of an actual decision” and found the conditions for mandamus were not satisfied.

In In re Foundations, Inc., Foundations sought a writ of mandamus ordering a district court in California to vacate its order denying Foundations’ motion to dismiss and denying its request to transfer the case to Ohio.  Foundations and Coverplay entered an agreement allowing the parties to exchange confidential information in connection with a potential deal.  Coverplay later became suspicious that Foundations was improperly using the information to infringe Coverplay’s patents.  Coverplay threated to sue.  Foundations asked for more time to respond to the threat, but then filed its own anticipatory declaratory judgment action in Ohio.  Hours after the Ohio case was filed, Coverplay sued in California.

The Federal Circuit refused to enter a writ of mandamus, finding that the California court’s refusal to apply the first-to-file rule was not a clear abuse of discretion given Foundation’s gamesmanship.

In the Momenta cases, Momenta had moved without opposition to stay proceedings pending the district court’s entry of final judgment.  The Federal Circuit summarily dismissed both appeals for lack of jurisdiction noting that “Momenta itself concedes its appeal is premature because no final judgment has issued.”  The appeals were subject to reinstatement under the same docket numbers without payment of an additional filing fee if the district court entered a final judgment within 60 days of the order and Momenta filed another notice of appeal within 30 days of entry of judgment.

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