Wyeth v. Dr. Wolfe, 08-0754 (E.D.Pa. May 8, 2008)
Dr. Wolfe holds a patent on a low dose progesterone therapy. Wolfe and Wyeth worked together for several years to bring Wolfe’s product to market. Later, Wyeth filed at least one similar patent application without listing Wolfe as an inventor. As a Canadian, Wolfe filed suit in Canada requesting that he be listed as the inventor and also requesting compensation for breach of contract, etc.
Wyeth then filed a declaratory judgment action in the Eastern District of Pennsylvania.
On May 8, the court denied Wolfe’s motion to stay the later-filed US proceedings. Without going into the merits of the stay or any patent specific law, the court looked to its own precedent holding refusing to stay where the foreign litigation is still “in its incipiency.”
“Here, the Canadian actions are not far enough along in the process to warrant a stay in this Court. In the case filed in the Ontario Superior Court of Justice, there is a pending Motion to Dismiss, which that Court will not rule on until June 25, 2008. Similarly, the case filed in the Federal Court of Canada is also in its beginning stages. While some evidence has been submitted on the matter, the case has not yet been scheduled for hearing. Thus, it is unlikely that either Canadian case will soon be resolved. Staying the proceedings in this Court would, therefore, only serve to delay the progress of this action. As such, the Court finds that a stay in this Court is inappropriate at this time.”
Parallel US & foreign patent litigation is an increasingly common occurrence. In addition to the cost, these cases raise important issues of inconsistent application of laws.
"In addition to the cost, these cases raise important issues of inconsistent application of laws."
Is it the inconsistent application in the US of the laws regarding motions to stay that you are referring to, Dennis? Or did you mean to say "inconsistent laws" instead of "inconsistent application of laws"?
Posted by: Malcolm Mooney | May 13, 2008 at 12:50 AM
My recollection is that the respective law and practice as to deciding who is a properly named inventor on a patent differs in significant respects between the U.S. and Canada? [Also, discovery rules.] That of course could be another good reason to deny a stay and allow ongoing litigation in the separate countries.
Posted by: Paul F. Morgan | May 13, 2008 at 09:05 AM