Free Letter - District Court of Delaware - Delaware

Case 1 :05-cv-00016-JJF Document 13 Filed O4/15/2005 Page 1 of 4
Petter
Anderson
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VIA ELECTRONIC FILING
The Honorable Joseph J. Farnan, Jr.
United States District Court for the District of Delaware
844 King Street
Wilmington, Delaware 19801
Re: Nokia Corporation and Nokia Inc. v.
Interdigital Communications and Interdigitai Technology Corporation
C. A. No. 05—16 (JJF) _____
Dear Judge Farnan:
Pursuant to Local Rule 7.1 .2(c), Defendants Interljigital Communications
Corporation and lnterbigital Technology Corporation (collectively, "InterDigital”) submit
this letter to inform this Court ofthe United States Court of Appeals for the Federal
Circuit’s recent decision in Apotex Inc. v. Pfizer Inc., 2005 U.S. App. LEXIS 5930 (Fed.
Cir. Apr. 11, 2005) (per curiam) (not designated for publication) (attached as Exhibit
“A"). The Federal Circuit’s decision vacates a district court decision cited by 1nterDigital
on pages 17 and 21 ofthe Opening Brief in Support of l§)et"endants’ Motion to Disrniss
Pursuant to Federal Rules of Civil Procedure 12(b)(l), l2(b)(6), and 12(h)(3). See
Opening Br., pp. 17, 21 (citing Torphurm, Inc. v. Pfizer Inc., 2004 U.S. Dist. LEXIS
11930 (D. Del. June 28, 2004)).
Torpharm, Inc. was a declaratory judgment action brought by Torpharm against
Pfizer in which Torpharm sought a declaratory judgment that 1`orpharm did not infringe a
patent held by Pfizer. Torpharm, Inc., 2004 U.S. Dist. LEXIS 11930, at *1. The district
court dismissed Torpharnfs declaratory judgment action for lack of jurisdiction, and
Torpharni appealed. Id. at *42. Less than one week before oral argument in the appeal,
Pfizer covenanted not to sue Torpharm for infringement of the patent in question. Apotex
Inc., 2005 U.S. App. LEXIS 5930, at *1. The Federal Circuit held that such a covenant
not to sue moots an action for declaratory judgment. Id. The Federal Circuit thus vacated
the district cou.rt’s judgment and opinion and remanded the case with instructions to
dismiss for lack of jurisdiction. Id. at *1-*2.

Case 1 :05-cv-00016-JJF Document 13 Filed O4/15/2005 Page 2 of 4
The Honorable Joseph J. Faman, Jr.
April 15, 2005
Page 2
Because the Federal Circuit determined that the covenant not to sue mooted the
appeal, it did not address the merits ofthe opinion on which InterDigita1 relied in support
of its motion to dismiss. Nevertheless, we are submitting the decision to fully apprise
Your Honor of this development in one ofthe cases cited in our papers.
Respectfully,
Richard L. Horwitz
678242
Enclosure
cc: Jack B. Blumenfeld (via etiling and hand cIelivery)(w/enc.)
Peter Kontio (via facsimi1e)(w/enc.)
Robert S. Harrell (via facsirnile)(w/enc.)

Case 1 :05-cv-00016-JJF Document 13 Filed O4/15/2005 Page 3 of 4

Case 1 :05-cv-00016-JJ F Document 13 Filed 04/ 1 5/2005 Page 4 of 4
Page I
1 of I DOCUMENT
APOTEX INC. (formerly known as TorPhn rm, lm:.) and APDTEX CORP., Plaintifts-
Appellants, v. PFiZER INC. and WARNER-LAMBERT COMPANY [now known as
Wnrner·—Lambcrt Company LLC), Defendants-Appellees.
04-1463
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CERCUIT
2005 [LS. App. LEXIS 5 930
April 11, 2005, Decided
DISPOSHION: [* I] Vaeated and remanded with instructions to dismiss.
JUDGES: Before MAYER, Circuit Judge, PLAGER, Senior Circuit Judge, and GAJARSA, Circuit Judge.
OPINION: PER CURIAM.
Apotex Inc. and Apotex Corp. (collectively "Apotex") appeal the judgment of the district court, which dismissed
Apotex's declaratory judgment action for lack ofjurisdiction. Torpharm, Inc. it Pfizer, Inc., No. 03-·CV-990, 2004 WL
1465 75 6 (D. Del, June 28, 2004) Because Apotex's appeal is moot, we vacate and remand with instructions to dismiss.
Less than one week before oral argument, Ptizer covenanted not to sue Apotex for infiingcmcnt of U.S. Patent No
4,743,450 A covenant not to suc, such as that provided by Pfizer, moors an action for declaratory judgment. Sec Amana
Refiigararian. Im: it Quadlmr. lac., 1721‘I3d852. 855 {Fed Ctr: 1999) ("[A] covenant not to sue. ...is sufficient to divest a
trial court of jurisdiction over a declaratory judgment action.").. As a result, thejudgment and opinion ofthe district court
are vacated and the case is remanded with instructions to dismiss for tack ofjurisdietion,. See ILS. Bancorp Mortgage Co.
it Banner MaHP{r1iip, 513 (LST 18. 23, 130 L.. Ed. 2:1 233 (1994) {*2] ("Vaeatur must be granted where moomess results
tram the unilateral action ofthe party who prevailed in the lower courtt"); Najjar in Aslrcmj, 2 73 FI3d 1330, 1340 {11111
Ch: 2001); Mayfield it Dalton, 109 E3:] 1423, 1427 {901 Cir: 1997).
COSTS
Apotex shall have its costs.