Potential Reissue/Reexam Does Not Create Actual Controversy
Abbott Labs v. Baxter Healthcare Corp., No. 04 C 0836, 2007 WL 2875503 (N.D. Ill. Sep. 28, 2004) (Guzman, J.).
Judge Guzman granted plaintiff Abbott Laboratories’ (“Abbott”) Fed. R. Civ. P. 15(a) motion to amend its Complaint dismissing claims regarding its U.S. Patent No. 6,444,859 (the “’859 patent”). After the Federal Circuit held the parent of the ‘859 patent invalid, Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363 (Fed. Cir. 2006), Abbott gave defendant Baxter Healthcare (“Baxter”) a covenant not to sue Baxter on the ‘859 patent (“Covenant”). Abbott, therefore, sought leave to dismiss its claims regarding the ‘859 patent. But Baxter argued that the claims should not be dismissed because the Covenant excluded any reissue or reexamination of the ‘859 patent, thereby creating an actual controversy. The Court held that Abbott’s potential suit based upon its potential reissue or reexam of the ‘859 patent did not create a current controversy. The Court, therefore, allowed Abbott to amend its Complaint dismissing claims regarding the ‘859 patent.
