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Intervet, Inc. v. Merial Limited

September 15, 2009

INTERVET, INC., PLAINTIFF,
v.
MERIAL LIMITED, DEFENDANT.



The opinion of the court was delivered by: Henry H. Kennedy, Jr. United States District Judge

MEMORANDUM OPINION

Intervet, Inc. ("Intervet") brings this action against Merial Limited ("Merial"), seeking a declaratory judgment of patent noninfringement and invalidity. Specifically, Intervet seeks a declaration that its vaccine against porcine circovirus does not infringe on any claim of Merial's U.S. Patent No. 6,224,882 ("'882 Patent"). Merial has brought a parallel action in the U.S. District Court for the Middle District of Georgia alleging that Intervet's vaccine infringes the '882 Patent. Before the Court is Merial's motion to dismiss Intervet's complaint, pursuant to the first-to-file rule, in favor of the Georgia action [#9]. In the alternative, Merial seeks to have this case transferred to the Middle District of Georgia or, if the Court retains it, a dismissal of the second count of the complaint. Upon consideration of this motion, the opposition thereto, and the record of this case, the Court concludes that the motion to dismiss the complaint should be granted.

I. BACKGROUND

A. Litigation Between Intervet and Merial in this Court

Merial and Intervet are opposing parties in two other actions before this Court. In case No. 06-00658, Intervet sought a declaratory judgment that its vaccine does not infringe on any claim of Merial's U.S. Patent No. 6,368,601 ("'601 Patent") and that the '601 Patent is invalid and unenforceable. The '601 Patent, titled "Porcine Circovirus Vaccine and Diagnostics Reagents," identified five new porcine circoviruses (PCVs), which the inventors believed were responsible for a disease in young pigs. After a Markman hearing, the Court construed six terms included in the claims of the '601 Patent: "PCV-2," "PCV-1," "ORFs 1-13," "vector," "epitope," and "an isolated DNA molecule comprising a nucleotide sequence encoding an epitope which is specific to PCV-2 and not specific to PCV-1." Intervet, Inc. v. Merial Ltd., 2007 WL 5685349, at *2-12 (D.D.C. Nov. 28, 2007). On August 12, 2009, the Court granted summary judgment in favor of Intervet with respect to infringement. Intervet, Inc. v. Merial Ltd., - F. Supp. 2d -, 2009 WL 2481977, at *1 (D.D.C. Aug. 12, 2009). The Court concluded, based on its claim constructions, that Intervet's vaccine does not literally infringe upon claims 9, 15, or 16 of the '601 Patent because the isolate of porcine circovirus Intervet used in its vaccine was not one of the strains included in the meaning of "PCV-2." Id. at *3-5. The Court also concluded that Intervet's vaccine does not literally infringe upon claims 32, 33, or 35 of the '601 Patent because Merial had not shown that the vaccine included "at least one DNA sequence encoding an epitope that is found only on one of the five 'PCV-2' strains." Id. at *5-6. Finally, the Court ruled that Merial could not invoke the doctrine of equivalents to expand the patent's claims beyond their literal terms; the Court's reasoning focused primarily on amendments Merial had made to certain claims during the patent prosecution proceedings that narrowed their meaning. Id. at *6-13.

In the second case, No. 07-00559, Intervet seeks a declaratory judgment that its vaccine does not infringe on Merial's U.S. Patent No. 7,192,594 ("'594 Patent") and that the '594 Patent is invalid. The '594 Patent, titled "Postweaning Multisystemic Wasting Syndrome and Porcine Circovirus from Pigs," includes claims with at least two terms that appear in the '601 Patent claims: "porcine circovirus Type II (PCVII)" and "ORF 6." This case has not progressed passed preliminary, non-substantive proceedings.

B. The '882 Patent

The developer of the '882 Patent assigned the patent to Merial. The patent is titled "Insect Cells or Fractions as Adjuvant for Antigens." It claims an adjuvant composed of insect cells, or fractions of insect cells, as well as methods of preparing and using the adjuvant. In other words, the patent relates to the use of insect cells to improve the immune response a vaccine generates. The '882 Patent is the subject of several actions pending in United States District Courts.

On December 8, 2008, Merial filed suit against Boehringer Ingelheim Vetmedica B.V. ("BIV") in the United States District Court for the Middle District of Georgia. In that action, No. 08-00116 ("BIV action"), Merial alleges that several of BIV's veterinary vaccines infringe on one or more claims of the '882 Patent.*fn1

On December 10, 2008, Merial filed an action against Intervet, also in the Middle District of Georgia. In that case, No. 08-00121 ("Georgia action"), Merial alleged that the production and sale of Intervet's vaccine infringes one or more claims of the '882 patent. It is this suit that Merial believes should proceed, to the exclusion of the present action, pursuant to the first-to-file rule.

Intervet filed this case on December 11, 2008, one day after Merial filed the Georgia action, seeking a declaration that its vaccine does not infringe on any claims of the '882 Patent and that the patent is invalid.

II. ANALYSIS

Merial requests first that the Court dismiss Intervet's complaint, arguing that the first-to-file rule should apply and thus only the Georgia action should proceed. In the alternative, Merial seeks a transfer to the Middle District of Georgia pursuant to 28 U.S.C. § 1404(a). Finally, Merial argues that if the Court retains this case, it should dismiss the second count of Intervet's complaint for failure to state a claim upon which relief can be granted. Based on the first-to-file rule and equitable principles, the Court dismisses Intervet's complaint. Because that issue is dispositive of the case, the Court will not address Merial's alternative motions.

Merial argues that Intervet's complaint should be dismissed pursuant to the first-to-file rule. "The first-to-file rule dictates that when two actions involving the same subject matter are pending, the first-filed action should proceed to the exclusion of the later-filed action." Intervet, Inc. v. Merial Ltd, 535 F. Supp. 2d 112, 114 (D.D.C. 2008) (citing Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), abrogated on other grounds, Wilton v. Seven Falls Co., 515 U.S. 277, 115 S.Ct. 2137, 132 L.Ed.2d 214 (1995)).*fn2 Merial reasons that because the parties and subject matter of the ...


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