Roxane Laboratories, Inc. v. Abbott Laboratories
Filing
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OPINION AND ORDER : Abbotts Motion to Substitute, Doc. Nos. 43 , 44 , is DENIED. Plaintiffs Motion to Amend, Doc. No. 42 , is GRANTED. Plaintiff shall file an amended complaint reflecting the addition of AbbVie Inc., as a named defendant within ten (10) days from the date of this order. Signed by Magistrate Judge Norah McCann King on 11/14/12. (rew)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
ROXANE LABORATORIES, INC.,
Plaintiff,
vs.
Civil Action 2:12-cv-312
Judge Watson
Magistrate Judge King
ABBOTT LABORATORIES,
Defendant.
OPINION AND ORDER
This matter is before the Court on Roxane’s Motion for Leave to
File Under Seal an Amended Complaint to Add Party (“Plaintiff’s Motion
to Amend”), Doc. No. 42, in which plaintiff seeks to amend the
Complaint to add AbbVie Inc. (“AbbVie”), as a party.
Defendant Abbott
Laboratories (“Abbott”) opposes that motion on the basis that AbbVie
should be substituted as a defendant under Rule 25© of the Federal
Rules of Civil Procedure.
Abbott Laboratories’ Memorandum in Response
to Roxane Laboratories, Inc.’s Motion for Leave to File an Amended
Complaint to Add New Party, Doc. No. 45.
Plaintiff has filed a reply.
Plaintiff’s Reply Brief in Further Support of its Motion to for (sic)
Leave to File an Amended Complaint to Add New Party (“Plaintiff’s
Reply”), Doc. No. 47.
Also before the Court is Defendant Abbott Laboratories’ Motion to
Substitute AbbVie Inc. as the Defendant in this Action (“Abbott’s
Motion to Substitute”), Doc. Nos. 43, 44.
Plaintiff opposes that
motion on the basis that AbbVie should be joined as a party.
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Plaintiff’s Brief in Opposition to Abbott’s Motion to Substitute
AbbVie Inc. as the Defendant in This Action (“Plaintiff’s Response to
Abbott’s Motion to Substitute”), Doc. No. 46.
reply.
Abbott has filed a
Reply in Support of Defendant Abbott Laboratories’ Motion to
Substitute Abbvie Inc. as the Defendant in This Action (“Abbott’s
Reply”), Doc. No. 49.
Plaintiff instituted this action on April 10, 2012, seeking a
declaration of invalidity and noninfringement in connection with two
patents held by Abbott relating to the drug Norvir®.
The patents
involved in this case were subsequently assigned to AbbVie.
Plaintiff’s Reply, pp. 1-2.
See
AbbVie is currently a wholly owned
subsidiary of Abbott that, due to restructuring at Abbott, will soon
take over Abbott’s research-based, proprietary pharmaceutical business
and become an independent company.
Abbott’s Reply, p. 1.
Plaintiff does not dispute that AbbVie is the owner of the
patents at issue in this case, that “AbbVie should be a party to this
lawsuit,” or that Rule 25 is a proper mechanism by which to join
AbbVie in the case.
Plaintiff’s Reply, pp. 1-2.
Plaintiff argues,
however, that AbbVie should be joined – not substituted – as a party
because this case “will proceed more efficiently if Abbott remains a
defendant.”
Id. at p. 3.
Specifically, plaintiff argues that
discovery is “inexorably intertwined with Abbott” because Norvir® was
developed at Abbott, Abbott employees are named inventors of the
patents at issue in this case, and the patents were originally
assigned to Abbott.
Substitute, p. 3.
Plaintiff’s Response to Abbott’s Motion to
According to plaintiff, Abbott would be unable to
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provide discovery in an “efficient manner” if AbbVie is substituted as
the only defendant.
Id. at pp. 3-4.
Plaintiff also argues that
Abbott should remain a party because Abbott is potentially liable for
attorneys’ fees and it “is not clear that the full interest in the
suit has been transferred to AbbVie such that AbbVie would in fact be
liable for such costs and fees.”
Id. at p. 4.
Abbott argues that the complete transfer of discoverable
information from assignor to assignee is not a requirement for
substitution under Rule 25(c) and that it would be improper to
maintain Abbott as a party simply for purposes of discovery.
Reply, p. 2.
Abbott’s
Abbott also maintains that it “has properly transferred
all of its rights, title, and interest in the patents-in-suit and
Norvir® to AbbVie, and that AbbVie has assumed all of Abbott’s
potential liabilities in connection with Norvir® litigation.
Id. at
p. 3.
Rule 25(c) provides that, “[i]f an interest is transferred, the
action may be continued by or against the original party unless the
court, on motion, orders the transferee to be substituted in the
action or joined with the original party.”
Fed. R. Civ. P. 25(c).
Rule 25 is a “procedural device designed to facilitate the conduct of
a case, and does not affect the substantive rights of the parties or
the transferee.”
Iron Workers Local No. 25 Pension Fund v. Watson
Wyatt & Co., No. 04-40243, 2008 WL 1924884, at *1 (E.D. Mich. Apr. 30,
2008) (citing 6 Moore's Federal Practice, § 25.32 (Matthew Bender 3rd
Ed.)).
“‘Rule 25(c) does not require that anything be done after an
interest has been transferred.’”
Blachy v. Butcher, 221 F.3d 896, 911
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(6th Cir. 2000) (quoting Luxliner P.L. Export, Co. v. RDI/Luxliner,
Inc., 13 F.3d 69, 71 (3rd Cir. 1993)).
Rather, “‘[t]he rule expressly
permits parties to continue in an action, even if they do not remain
the real party in interest, as long as the cause of action itself
survives the transfer to the new party.’”
Verizon Advanced Data Inc.
v. FrogNet, Inc., No. 05-cv-955, 2011 WL 6340262, at *11 (S.D. Ohio
Dec. 19, 2011) (quoting ELCA Enters., Inc. v. Sisco Equip. Rental &
Sales, Inc., 53 F.3d 186, 191 (8th Cir. 1995)).
Because Rule 25(c) is
merely a procedural device designed to facilitate the conduct of a
case, a decision under the Rule generally falls within the district
court’s discretion.
Raymond v. Tenn. Valley Auth., No. 3:09-CV-48,
2012 WL 2191625, at *2 (E.D. Tenn. June 14, 2012) (citing Luxliner
P.L. Export, Co., 13 F.3d at 71).
See also Bamerilease Capital Corp.
v. Nearburg, 958 F.2d 150, 154 (6th Cir. 1992) (citing Bauer v.
Commerce Union Bank, 859 F.2d 438, 441 (6th Cir. 1988)).
The Court agrees with Abbott that it would be imprudent to
maintain Abbott as a party simply for the ease of discovery.
However,
it is unclear from the record whether AbbVie has assumed all of
Abbott’s potential liabilities in connection with this case.
See
Abbott’s Motion to Substitute, Doc. No. 44, Exhibit B; Abbott’s Reply,
Exhibit B.
The assignment agreements attached to Abbott’s Motion to
Substitute and Abbott’s Reply are redacted such that the Court is
unable to determine if AbbVie has assumed liability for any attorneys’
fees, should such fees be awarded to plaintiff in this case.
Under
the circumstances, the Court will exercise its discretion under Rule
25(c) and will join AbbVie Inc., as a defendant along with defendant
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Abbott.
See Melton v. Bank of Lexington, No. 02-1152 B/P, 2008 WL
867896, at *1 (W.D. Tenn. Mar. 28, 2008) (exercising discretion under
Rule 25(c) to join parties – rather than substitute parties – even
though the record provided that the joined party assumed all the debts
and liabilities of the original defendant).
Accordingly, Abbott’s Motion to Substitute, Doc. Nos. 43, 44, is
DENIED.
Plaintiff’s Motion to Amend, Doc. No. 42, is GRANTED.1
Plaintiff shall file an amended complaint reflecting the addition
of AbbVie Inc., as a named defendant within ten (10) days from the
date of this order.
November 14, 2012
s/ Norah McCann King
Norah McCann King
United States Magistrate Judge
1
The Preliminary Pretrial Order, Doc. No. 29, requires that all
motions for leave to amend the pleadings be filed, if at all, by April 1,
2013.
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