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Photothera, Inc. v. Oron

March 19, 2009

PHOTOTHERA, INC., A DELAWARE CORPORATION, PLAINTIFF,
v.
AMIR ORON, AN INDIVIDUAL; AND URI ORON, AN INDIVIDUAL, DEFENDANTS.



The opinion of the court was delivered by: Hon. Michael M. Anello United States District Judge

ORDER DENYING DEFENDANT'S MOTION TO DISMISS PLAINTIFF'S SECOND AMENDED COMPLAINT; [Doc. No. 48] DENYING DEFENDANT'S MOTION TO STAY [Doc. No. 49]

Presently before the Court are Defendant Uri Oron's Motion to Dismiss Plaintiff's Second Amended Complaint [Doc. No. 48] and Motion to Stay Under the International Abstention Doctrine [Doc. No. 49], Plaintiff PhotoThera's oppositions to both motions [Doc. Nos. 51 & 52], and Defendant's replies [Doc. Nos. 53 & 54]. For the following reasons, the Court DENIES Defendant's Motion to Dismiss and DENIES Defendant's Motion to Stay.

BACKGROUND

On December 4, 2007, presiding District Judge Janis L. Sammartino dismissed Plaintiff's First Amended Complaint ("FAC") without prejudice pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., finding that Plaintiff's claims for declaratory relief were not ripe for consideration by this Court, due to the pendency of litigation between the parties in Israel. (See Doc. No. 39, 5-8.) On April 1, 2008, Plaintiff filed a Second Amended Complaint ("SAC") [Doc. No. 47] once again seeking declaratory relief, and alleging breach of patent license by Defendant Uri Oron. (SAC, 14.) The SAC refashions Plaintiff's claims against Defendant Uri, and no longer names Amir Oron as a defendant in this action. Plaintiff now seeks a declaration of non-infringement among its requests for relief, thereby invoking this Court's subject matter jurisdiction pursuant to federal patent laws. (Id. § 36.)

A. Motion to Dismiss*fn1

Defendant Uri Oron moves to dismiss Plaintiff's SAC, arguing that it is essentially identical to the FAC which Judge Sammartino previously dismissed.*fn2 (See Court's December 4, 2007 Order.) Defendant Uri asserts multiple grounds for dismissal, including (1) the December 4, 2007 Order applied to the SAC requires dismissal of Plaintiff's claims for declaratory relief; (2) former defendant Amir Oron is subject to joinder pursuant to Federal Rule of Civil Procedure 19(a)(2) as an indispensable party requiring dismissal of the SAC in his absence pursuant to Rule 12(b)(7); (3) there is no case or controversy involving Defendant Uri, the only named defendant in the case; (4) the facts alleged in the SAC are barred from use in this suit pursuant to California's litigation privilege; (5) Plaintiff's claim for breach of patent license is being litigated in the Israeli suit and does not state a claim for relief in this Court; (6) the Court should dismiss the case on the grounds of forum non conveniens.

1. Whether the December 4, 2007 Order is Dispositive of this Matter

Defendant Uri's first argument relies upon the assertion that Plaintiff's SAC states the exact same claims for declaratory relief as the FAC, thus requiring its dismissal pursuant to Judge Sammartino's ruling dismissing the FAC. Therefore, as a threshold matter, the Court must determine whether the three claims for declaratory relief now alleged by Plaintiff are identical to its previously dismissed claims. A side by side comparison of the claims is illustrated below.

FAC's Claims for Declaratory Relief*fn3 SAC's Claims for Declaratory Relief

(1) A judicial determination of the parties' (1) A judicial declaration that Plaintiff's rights and interests under the Patent manufacture, use, sale, offer to sell, or Assignment. importation of the inventions claimed in the Subject Patents would not constitute patent infringement under 35 U.S.C. §§ 271, 281.

(2) A judicial determination of the parties' (2) A judicial declaration that Plaintiff has rights and interests under the License exclusive rights to the inventions claimed in the Agreement. Subject Patents under the Patent License, regardless of any dispute that currently may exist between the legal title holder and the named inventor.

(3) A judicial determination of the validity and (3) A judicial declaration that Plaintiff may enforceability of these contracts [the make, use, offer to sell, sell, and import the assignment and license]. inventions claimed in the Subject Patents free of any future royalty obligations under its fully paid-up Patent License.

(4) A judicial determination of any requirement placed on Plaintiff to provide Defendant Uri and/or Defendant Amir with any royalty or other additional consideration related to the assignment and license of the patent.

Plaintiff's claims as alleged in the SAC are not identical to the claims for declaratory relief alleged in the FAC. There are several material differences. First, Plaintiff no longer seeks a declaration of rights and interests under the Patent Assignment, an agreement entered into by Defendant Uri and former defendant Amir. Second, Plaintiff no longer seeks a declaration of the validity of the Patent Assignment. Based on the allegations in Plaintiff's SAC, the Patent Assignment is not relevant to the instant case. Third, Plaintiff now seeks a declaration of non-infringement of the Subject Patents, to which Uri is the legal title holder and which Uri licensed to ...


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