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Thomson Instrument Co. v. Biotage AB

July 3, 2007

THOMSON INSTRUMENT CO., A NEVADA CORPORATION; AND SCIENTIFIC PLASTIC PRODUCTS, INC., A CALIFORNIA CORPORATION, PLAINTIFFS,
v.
BIOTAGE AB, A SWEDISH CORPORATION, DEFENDANT.



The opinion of the court was delivered by: Hon. Barry Ted Moskowitz United States District Judge

ORDER DENYING MOTION TO DISMISS

Defendant Biotage AB ("Biotage") has filed a motion to dismiss the third, fourth, fifth, sixth, seventh, and eighth claims of the Complaint. For the reasons discussed below, Biotage's motion is DENIED.

I. BACKGROUND

Biotage, a Swedish corporation, is the holder of all rights, title and interest in U.S. Patent No. 6,294,087, entitled "Chromatography Column." (Clark Decl., ¶ 3, Exh. A.) Pursuant to its rights under the patent, Biotage manufactures chromatography columns that are used in liquid chromatography applications.

In August 2006, Biotage filed suit against Plaintiff Thomson Instrument Co. ("Thomson") in the Eastern District of Virginia, alleging that SINGLE StEP columns sold by Thomson infringe Biotage's '087 patent.

On September 13, 2006, Mr. Wellman, counsel for Thomson, and Mr. Clark, counsel for Biotage, had a telephone conversation regarding the litigation and related issues. During this conversation, Mr. Clark stated that Biotage was considering adding additional patents to the Virginia action. (Wellman Decl., ¶ 6.) When Mr. Wellman asked Mr. Clark to identify the patents, Mr. Clark said he would do so at a future time. (Id.)

Subsequent to this conversation, Mr. Wellman made additional requests to Mr. Clark to identify any other patents that Biotage intended to assert against Thomson. (Wellman Decl., ¶ 7; Exh. D to Clark Decl.) In a letter dated October 11, 2006, Mr. Clark stated:

Finally, Biotage owns additional patents including U.S. Patent Nos. 6,436,284 and 6,802,968 which are directed to chromotography columns having a recessed inflow region for receiving a solid-supported sample. Our initial analysis indicates that the SingleStep(r) columns are also covered by the claims of these patents. Accordingly, we may be amending our complaint to include additional counts for infringement of one or more claims of U.S. Patent Nos. 6,436,284 and 6,802,968. As [of] this time, Biotage has not made a final decision of whether to add these patents to the present litigation or not. (Exh. E to Clark Decl.)

On October 16, 2006, Thomson and Plaintiff Scientific Plastic Products, Inc. ("SPP"), the manufacturer of the SINGLE StEP column, commenced this action. The Complaint asserts the following claims against Biotage: (1) declaration of non-infringement of the '087 patent; (2) declaration of invalidity of the '087 patent; (3) declaration of non-infringement of '284 patent; (4) declaration of invalidity of '284 patent; (5) declaration of non-infringement of the '968 patent; (6) declaration of invalidity of the '968 patent; (7) declaration of the unenforceability of the '284 patent; (8) declaration of the unenforceability of the '968 patent.

Subsequently, Biotage voluntarily dismissed the Virginia action. Biotage has asserted counterclaims in this action for infringement of the '087 patent.

Biotage has never indicated that it has reconsidered its position with respect to the '284 and '968 patents and has not disclaimed any intention to bring suit on these patents. (Wellman Decl. ¶ 8.) Biotage has declined to execute a covenant not to sue on these patents. (Id.)

II. DISCUSSION

Biotage moves for a dismissal of Claims 3-8 on the ground that they are not supported by an "actual controversy," as required by Article III of the United States Constitution. However, as discussed below, the Court finds that Thomson and SPP (collectively "Plaintiffs") have demonstrated the existence of a justiciable controversy.

The Declaratory Judgment Act provides that "[i]n a case of actual controversy within its jurisdiction . . . any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration, whether or ...


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