Free Reply Memorandum - District Court of California - California

Case 3:07-cv-05054-CRB

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Filed 10/19/2007

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Bingham McCutchen LLP WILLIAM F. ABRAMS (SBN 88805) [email protected] PATRICK T. WESTON (SBN 211448) [email protected] SAMANTHA REARDON (SBN 240068) [email protected] 1900 University Avenue East Palo Alto, CA 94303-2223 Telephone: 650.849.4400 Facsimile: 650.849.4800 Attorneys for Plaintiff ALERE MEDICAL, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

ALERE MEDICAL, INC., a California Corporation, Plaintiff, v. HEALTH HERO NETWORK, INC., a California Corporation, Defendant.

No. C-07-05054 CRB ALERE MEDICAL, INC.'S REPLY TO NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (CIVIL L.R. 3-13)

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Defendant Health Hero Network, Inc. ("Health Hero") filed a "Notice of Pendency of Other Action or Proceeding Pursuant to Civil L.R. 3-13(a) and (b) and Statement Opposing Notice filed by Alere Medical, Inc. Pursuant to Civil L.R. 3-13(c)" on October 9, 2007 ("Health Hero Notice") (Docket No. 7). Plaintiff Alere Medical, Inc. ("Alere") opposes Health Hero's position on relatedness to the action in Illinois, and provides further information regarding its Notice of Pendency of Other Action or Proceeding, filed October 1, 2007 (Docket No. 3) in light of Health Hero's opposition. Health Hero asserts that the patent infringement action it filed against Alere in the United States District Court for the Northern District of Illinois, Eastern Division, on September 6, 2007 (Civil Action No. 07CV5031) (the "Illinois action") "involves a material part of the same subject matter" of the present action because the patents at issue are related to the patent in
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ALERE MEDICAL, INC.'S REPLY TO NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (CIVIL L.R. 3-13)

Case 3:07-cv-05054-CRB

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the Illinois action, and the allegedly infringing Alere products are the same. Health Hero Notice at 1:10-15. Health Hero further contends that coordination of the two proceedings is required "to avoid conflicts, conserve resources and provide an efficient determination of the dispute between the two parties." Id. at 1:26-2:1. This is incorrect. The Illinois action concerns the alleged infringement of a single claim of U.S. Patent No. 7,223,236 (the "'236 patent"). The case in this Court, however, seeks a declaration that Alere's products do not infringe the claims of seven different patents unrelated to the `236 patent, and that those patents are invalid. Those patents were included in a demand letter sent to Alere by Health Hero; the single patent in the Illinois action was not included in that letter. See Declaration of Ronald D. Geraty, M.D. in Support of Alere Medical, Inc.'s Reply to Notice of Pendency of Other Action or Proceeding (Civil L.R. 3-13) ("Geraty Decl."), ¶¶ 3-4. The possibility that some of the same Alere products might be at issue in both cases does not create common questions of fact such that there will be an unduly burdensome duplication of labor and expense or conflicting results if the cases are conducted before different judges. Civil L.R. 3-13(b)(3)(B) first considers if a case in this district and cases in other districts should be assigned to Multi-District Litigation under 28 U.S.C. section 1407. There is no reason for that in this case. Even if such common questions of fact existed, Health Hero would be unable to show that the issues in each action are sufficiently complex to justify transfer under 28 U.S.C. section 1407. These actions are not typical of those ordinarily assigned to Multi-District Litigation. Where, as here, a minimal number of cases are involved, the moving party has "a strong burden to show that the common questions of fact are so complex and the accompanying discovery so time-consuming as to overcome the inconvenience to the party whose action is being transferred and its witnesses." See In re Interstate Medicaid Patients at Good Samaritan Nursing Center, 415 F.Supp. 389, 391 (J.P.M.L. 1976) (denying motion to transfer where only two actions were involved and the common factual issues were not sufficiently complex). Health Hero cannot meet this burden. The next inquiry under Civil L.R. 3-13 (b)(3)(B) is if other coordination of the
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ALERE MEDICAL, INC.'S REPLY TO NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (CIVIL L.R. 3-13)

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dispute between the parties. Health Hero does not dispute that both it and Alere are California corporations, or that Health Hero's principal place of business is in Santa Clara County, California. Alere has offices in California and Nevada, and witnesses pertinent to this action reside in those locations, including the Northern District of California. See Geraty Decl., ¶ 2. Moreover, Stephen Brown, the inventor of six of the seven patents at issue in this action, and the inventor of the patent at issue in the Illinois action, resides within this District. See Complaint (Docket No. 1), Exs. A, C-G; and Declaration of Samantha L. Reardon in Support of Alere Medical, Inc.'s Reply to Notice of Pendency of Other Action or Proceeding (Civil L.R. 3-13), ¶ 2, Ex. A (Alere's Answer and Counterclaims in the Illinois action), and Exhibit 1 thereto (U.S. Patent No. 7,223,236). Health Hero fails to point to any facts that demonstrate that the transfer of this action to the Northern District of Illinois would be warranted on the ground that the Illinois venue is more convenient for either the parties or witnesses, or that the location itself is central to the claims at issue. Health Hero's only connections to Illinois is that its counsel resides there and that at least one of Alere's customers resides there. These reasons, by themselves, do not justify the transfer of the present action. Moreover, the Illinois case involves a single claim in a single patent, and the case here involves seven different patents threatened against Alere. To the extent these cases are related, the weight of gravity, witnesses and evidence is in this district. That fact that Alere and Health Hero are the only parties to these actions does not change the weight of gravity of the witnesses or the evidence. Accordingly, the Northern District of California is the most logical venue to determine Alere's claims, and transfer of this action pursuant to section 1407 would be inappropriate.

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No. C-07-05054 CRB

ALERE MEDICAL, INC.'S REPLY TO NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (CIVIL L.R. 3-13)

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DATED: October 19, 2007 Respectfully submitted,

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A/72261349.1/3005445-0000322390

By:

/s/ William F. Abrams William F. Abrams Attorneys for Plaintiff ALERE MEDICAL, INC.

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No. C-07-05054 CRB

ALERE MEDICAL, INC.'S REPLY TO NOTICE OF PENDENCY OF OTHER ACTION OR PROCEEDING (CIVIL L.R. 3-13)