Free Motion to Dismiss/Lack of Subject Jurisdiction - District Court of Delaware - Delaware

Case 1:06-cv-00593-JJF

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 3V, INC., a Delaware Corporation, ) ) Plaintiff ) ) v. ) ) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Defendant. ) __________________________________________) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Cross-Plaintiff ) ) v. ) ) 3V, INC., a Delaware Corporation, ) ) Cross-Defendant. ) __________________________________________) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Plaintiff ) ) v. ) ) 3V, INC., a Delaware Corporation, ) ) Defendant. ) __________________________________________)

C.A. No. 06-00593-JJF

C.A. No. 06-00629-JJF

C.A. No. 06-672-JJF

PLAINTIFF'S MOTION TO DISMISS FOR LACK OF SUBJECT MATTER JURISDICTION 3V, Inc. ("3V") respectfully moves the Court, pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure for an Order dismissing these actions for lack of jurisdiction over the subject matter. This motion is based upon the fact that 3V has

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disclaimed all claims of U.S. Patent No. 5,658,973 ("the `973 patent"), the patent involved in the interference at issue. FACTS 1. On May 24, 2005, the Board of Patent Appeals and Interferences of the

United Sates Patent and Trademark Office ("Board") initiated Interference No. 105,262 between 3V (assignee of Guiseppe Raspanti and owner of U.S. Patent No. 5,658,973 Patent) and CIBA Specialty Chemicals Corporation (assignee of Francois Gugumus and owner of U.S. Patent Application Serial No. 10/081,291)(hereinafter, "CIBA"). In an interference proceeding such as this, the Board, authorized by 35 U.S.C. § 135, determines "any question of patentability and priority of invention between two or more parties claiming the same patentable invention." 37 C.F.R. § 1.601(i).1 2. On July 27, 2006, the Board entered a final decision. This decision was

partially adverse to both parties: (1) the Board awarded judgment on priority of invention against 3V and in favor of CIBA; and (2) the Board held that claims 16-27 were not entitled to the benefit of priority based on the priority application EP 95810042.2. Upon receiving the Board's determination, 3V initiated these proceedings by bringing Civil Action No. 06-593 against CIBA, pursuant to 35 U.S.C. § 1462 and 37 C.F.R. § 1.303.

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Title 37, section 1.601(i) of the Code of Federal Regulations further provides: An interference may be declared between two or more pending applications naming different inventors when, in the opinion of an examiner, the applications contain claims for the same patentable invention. An interference may be declared between one or more pending applications and one or more unexpired patents naming different inventors when, in the opinion of an examiner, any application and any unexpired patent contain claims for the same patentable invention.

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Title 35, section 146 of the United States Code provides:

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CIBA responded by filing a Counterclaim in this Action, and a Cross-Complaint and a third Complaint in Civil Action Nos. 06-629 and 06-672. All three of these actions involve the same patents and subject matter and all three seek similar types of relief. They have been treated as consolidated in various orders pleadings filed by and with the Court. 3. Ever since the commencement of these actions, the parties have engaged

in settlement discussions. As a result of the negotiations, 3V has come to realize that a settlement on terms it believed acceptable was unlikely and that the costs and uncertainties of the litigation outweighed the potential benefits to 3V. On March 20, 2008, 3V filed a statutory disclaimer pursuant to 35 U.S.C. § 253 disclaiming all claims of the `973 patent and dedicating to the public its entire right, title, and interest in the patent. A copy of this Disclaimer is attached to this Motion as an Exhibit.

Any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences on the interference, may have remedy by civil action, if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in section 141 of this title, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.

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LAW AND ANALYSIS I. Plaintiff's Motion to Dismiss for Lack of Subject Matter Jurisdiction should be granted because a case or controversy no longer exists as required by Article III of the Constitution as a result of 3V's statutory disclaimer of all rights under the `973 patent. A. 4. By filing the statutory disclaimer 3V has relinquished all rights to exclude others from the `973 patent. Title 35, section 253 of the United States Code provides: "A patentee . . .

may . . . make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such a disclaimer . . . shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimer and by those claim under him." The Federal Circuit "has interpreted the term `considered as part of the original patent' in section 253 to mean that the patent is treated as though the disclaimed claims never existed." Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998); see Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) ("A statutory disclaimer under 35 U.S.C. § 253 has the effect of cancelling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed."). 5. Therefore, by filing the statutory disclaimer, 3V relinquished any right to

exclude others from the `973 patent. Further, 3V has no remaining rights either to enforce the claims or to obtain a reissue of any of those claims. Since all of the claims have been disclaimed, the effect is the same as dedication of the patent to the public or abandonment. See W.L. Gore & Assocs., Inc. v. Oak Materials Group, Inc., 424 F. Supp. 700, 701 (D. Del. 1976).

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B.

3V's disclaimer of the `973 patent terminated the justiciable case and controversy and any interest for 3V in the outcome of the pending action. "It is axiomatic that a federal court may not address the merits of a legal

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question not posed in an Article III case or controversy, and that a case must exist at all the states of appellate review." Aqua Marine Supply v. Aim Machining, Inc., 247 F.3d 1216, 1219 (Fed. Cir. 2001) (quotation omitted). Similarly, "[w]hen the issues presented in a case are no longer `live' or the parties lack a legally cognizable interest in the outcome, the case becomes moot and the court no longer has subject matter jurisdiction." Weiss v. Regal Collections, 385 F.3d 337 (3rd Cir. 2004) (citing County of Los Angeles v. Davis, 440 U.S. 625, 631 (1979)) (emphasis added). 7. In the absence of a justiciable case or controversy, a civil action is moot

because "federal courts are without power to decide questions that cannot affect the rights of litigants in the case before them." DeFunis v. Odegaard, 416 U.S. 312, 317 (1974). Therefore, "[m]ootness has two aspects: (1) the issues presented are no longer live; or (2) the parties lack a cognizable interest in the outcome." Brown v. Philadelphia Hous. Auth., 350 F.3d 338, 343 (3rd 2003). 8. "The central question of all mootness problems is whether changes in

circumstances that prevailed at the beginning of litigation have forestalled any occasion for meaningful review." Rendell v. Rumsfeld, 484 F.3d 236, 240 (3rd Cir. 2007). Moreover, "to qualify as a case fit for federal-court adjudication, an actual controversy must be extant at all stages of review, not merely at the time the complaint is filed." Arizonans for Official English v. Arizona, 520 U.S. 43, 67 (1997); see also Rendell, 484 F.3d at 240-41 ("The requirement that a case or controversy be `actual and ongoing' 5
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extends throughout all stages of federal judicial proceedings, including appellate review."). 9. Similarly, "[a]s a general matter, a case becomes moot if, through the

action of the party seeking relief, the immediate controversy is terminated." Aqua Marine Supply, 247 F.3d at 1220. Although "in some circumstances the opposing party's lack of interest will not bar adjudication on the merits, the outcome is different when the appellant is responsible for the opposing party's lack of continued interest, for example, as . . . by settlement." Id. (internal citations omitted). In contrast, "a voluntary cessation of infringing activity by the defendant would not necessarily render the case moot, even if the opposing party asserted that it had lost interest in the matter." Id. (internal citations omitted). Specifically in the context of litigation involving patents, this Court has

previously recognized that a formal disclaimer destroys any justiciable case or controversy. See W.L. Gore & Assocs., Inc. v. Oak Materials Group, Inc., 424 F. Supp. 700, 702 (D. Del. 1976) ("As plaintiff has formally disclaimed all claims of the patent, there is no longer a justiciable case or controversy before the Court with respect to the validity of any of those claims."). 10. Here, 3V has disclaimed all interest in defending the `973 patent. As

established by cases previously before this Court, as a result of 3V's disclaimer and dedication, a justiciable case or controversy no longer exists. Therefore, the pending cases are moot and no subject matter remains for the assertion of this Court's jurisdiction. C. 11. All exceptions to the mootness doctrine are inapplicable to the case at bar. In anticipation that CIBA may argue for the application of an exception to

the mootness doctrine, 3V notes the existence of three exceptions: (1) "voluntary 6
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cessation" on the part of the defendant, (2) questions that are "capable of repetition, yet evading review," and (3) questions involving class actions where the named party ceases to represent the class. Since this is not a class action, only two of the exceptions qualify for consideration in this case: (1) "voluntary cessation" and (2) "capable of repetition, yet evading review." See Rendell v. Rumsfeld, 484 F.3d 236, 241 (3rd Cir. 2007). 12. First, regarding the former, the Supreme Court of the United States has

observed that "Mere voluntary cessation of allegedly illegal conduct does not moot a case." United States v. Phosphate Export Ass'n, 393 U.S. 199, 203 (1968). The purpose behind the "voluntary cessation" exception "is to prevent defendants from forever ... avoid[ing] judicial review simply by ceasing the challenged practice, only to resume it after the case [is] dismissed." Rendell, 484 F.3d at 243 (citation omitted).

"Consequently, if the defendant ceases the harm, the case retains vitality unless, `subsequent events ma[k]e it absolutely clear that the allegedly wrongful behavior could not reasonably be expected to recur.'" Id. At 242-243 (citation omitted). 13. Here, 3V voluntarily ceased the case or controversy with the unilateral act

of statutory disclaimer. In filing the disclaimer, 3V has retained no interest in the patent and can not revive it in any way. As such, it is absolutely clear that the controversy in these cases, arising from an Interference proceeding between the `973 patent and CIBA's `291 application, cannot reasonably be expected to recur. 14. Second, under the "repetition and review" exception, "a court may

exercise its jurisdiction and consider the merits of a case that would otherwise be deemed moot when `(1) the challenged action is, in its duration, too short to be fully litigated prior to cessation or expiration, and (2) there is a reasonable expectation that the same

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complaining party will be subject to the same action again.'" Id. (quoting Spencer v. Kemna, 523 U.S. 1, 17 (1998)). However, this exception "is narrow and available `only in exceptional situations.'" Id. (quoting City of Los Angeles v. Lyons, 461 U.S. 95, 109 (1983)). Here, the challenged action cannot be said to be "too short to be fully litigated prior to cessation." In contrast to situations which gave rise to the exception, these actions were initiated to review a decision that was fully litigated by the parties. In addition, there is no expectation that 3V will refile the same action again. Having given up any rights to the `973 patent, 3V no longer has any interest in revisiting the Board's findings and is foreclosed from reviving the claims in order to renew any such interest. In short, the repetition and review exception does not apply since 3V has given up the only thing giving it any interest in these cases. There is simply no subject matter remaining to be the basis for a repeat action. 15. Therefore, none of the recognized exceptions to the mootness doctrine are

applicable to the facts present here. As a result of 3V's disclaimer which, in effect, dedicated the `973 patent to the public, a justiciable case or controversy no longer exists for this Court to decide. This Court lacks subject matter jurisdiction over these civil actions. WAIVER OF BRIEFING 16. 3V respectfully asserts that this Motion does not raise any complicated or

novel issues of fact or law. Therefore, 3V waives its right to file an Opening Brief in further support of this Motion. 3V does reserve the right to submit a Reply in the event that CIBA files an Objection to this Motion.

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CONCLUSION 17. As 3V has demonstrated, there no longer exists a case or controversy for

the assertion of this Court's subject matter jurisdiction. The statutory disclaimer of all the claims of the `973 patent, filed by 3V eliminated all of 3V's interest in the matter without any ability for 3V to revive the claims or obtain a reissue of the patent. With the effect of the disclaimer being complete cancellation of all claims of the patent, the pending cases regarding review of the Board's decisions regarding the patentability of the claims and priority are moot. No subject matter remains for the assertion of this Court's jurisdiction. For these reasons, 3V respectfully requests that this Court grant this Motion and dismiss these cases. A form of Order is attached.

Dated: March 27, 2008

STEVENS & LEE, P.C.

By: /s/ Joseph Grey Joseph Grey (ID 2358) 1105 North Market Street, Seventh Floor Wilmington, DE 19801 Telephone: (302) 654-5180 Telecopier: (302) 654-5181 E-Mail: [email protected] NEXSEN PRUET, LLC Angelica M. Colwell, Esquire 205 King Street, Suite 400 Charleston, South Carolina, 29401 Telephone: (843) 577-9440 Facsimile: (843) 720-1777 [email protected]

Attorneys for 3V, Inc.

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) Plaintiff ) ) v. ) ) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Defendant. ) __________________________________________) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Cross-Plaintiff ) ) v. ) ) 3V, INC., a Delaware Corporation, ) ) Cross-Defendant. ) __________________________________________) CIBA SPECIALTY CHEMICALS ) CORPORATION, a Delaware Corporation, ) ) Plaintiff ) ) v. ) ) 3V, INC., a Delaware Corporation, ) ) Defendant. ) __________________________________________) 3V, INC., a Delaware Corporation,

C.A. No. 06-00593-JJF

C.A. No. 06-00629-JJF

C.A. No. 06-672-JJF

ORDER DISMISSING ACTIONS This __ day of ______, 2008, upon the Motion of 3V, Inc. to dismiss these actions for lack of subject matter jurisdiction (the "Motion"), and after consideration of the arguments advanced for and against the Motion, the Court having found that it lacks subject matter jurisdiction over these cases,

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IT IS HEREBY ORDERED, that 1. 2. The Motion is GRANTED. These actions are hereby dismissed, with prejudice. Each party shall bear

its own costs with respect to these proceedings.

______________________________ Joseph J. Farnan, Jr. United States District Court Judge

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CERTIFICATE OF SERVICE I, Joseph Grey, hereby certify that, on this 27th day of March, 2008, and in addition to the service provided by the Court's CM/ECF system, I caused true and correct copies of the foregoing Motion to Dismiss to be served on counsel for CIBA Specialty Chemicals Corporation by first class, United States mail, postage prepaid and addressed as follows:

Chad M. Shandler, Esquire Richards Layton & Finger One Rodney Square, 10th Floor P.O. Box 551 Wilmington, DE 19899 Alan E.J. Branigan, Esquire Millen White Zelano & Branigan, P.C. 2200 Clarendon Boulevard Suite 1400 Arlington, VA 22201

/s/ Joseph Grey Joseph Grey

NPGVL1:364180.1-MO-(BDERRICK) 030146-00022

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