Schering Corp. v. Taro Pharmaceutical USA, Inc.

68 F. App'x 967

• Court: Court of Appeals for the Federal Circuit
• Decided: July 2, 2003
• Docket: Nos. 03-1026, 03-1029, 03-1028
• Status: Published

Opinion

ON MOTION

LOURIE, Circuit Judge.

ORDER

Schering Corporation moves without opposition (1) to dismiss 03-1028, (2) to vacate the September 19, 2002 judgment of the United States District Court for the District of New Jersey declaring invalid Claims 1 and 3 of U.S. Patent No. 4,569,-716 in district court docket no. 01-6175 and (3) for a remand to the district court with instructions to dismiss as moot all of Schering’s claims and McNeil Consumer Healthcare et al.’s (McNeil) defenses and counterclaims.

Schering states that it filed suit against McNeil for infringement of the ’716 patent after McNeil submitted New Drug Application (NDA) 21-339 to the United States Food and Drug Administration (FDA). Schering states that McNeil recently withdrew NDA 21-339 from consideration by the FDA, rendering Schering’s action against McNeil moot. Schering states that it “was not involved in McNeil’s withdrawal decision and had no input regarding its occurrence or timing.”

Because the case has become moot through no voluntary action by Schering, it is appropriate to vacate the district court’s judgment. See United States v. Munsingwear, 340 U.S. 36, 71 S.Ct. 104, 95 L.Ed. 36 (1950). See also U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 115 S.Ct. 386, 130 L.Ed.2d 233 (1994). However, we note that the district court judgment in appeals 03-1026, -1029 remains and that the appeals of that judgment are going forward.

Accordingly,

IT IS ORDERED THAT:

(1) Schering’s motion to dismiss 03-1028 is denied.

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(2) Schering’s motion to vacate the district court’s September 19, 2002 judgment in district court docket no. 01-6175 is granted.

(3) Schering’s motion to remand in 03-1028 is granted. The United States District Court for the District of New Jersey is directed to dismiss as moot Schering’s claims and McNeil’s defenses and counterclaims.

(4) Each side shall bear its own costs in 03-1028.

The court cannot both dismiss and remand.