Stemina Biomarker Discovery v. Metabolon

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					                              UNITED STATES DISTRICT COURT
                              WESTERN DISTRICT OF WISCONSIN


STEMINA BIOMARKER DISCOVERY, INC.

          Plaintiff,
                                                          Case No. 12-cv-494
     v.

METABOLON, INC.,                                          JURY TRIAL DEMANDED

          Defendants.


                        COMPLAINT FOR DECLARATORY JUDGMENT

          Plaintiff, Stemina Biomarker Discovery, Inc. (“Stemina”), by its attorneys, Quarles &

Brady LLP, as and for its complaint, alleges as follows:

                                  NATURE OF THE LAW SUIT

          1.      This is an action under the Federal Declaratory Judgment Act, 28 U.S.C.

§§ 2201 and 2202, against Metabolon, Inc. (“Metabolon”) for a declaration that pursuant to

the patent laws of the United States, 35 U.S.C. §§ 1 et seq., two sets of United States patents

are invalid and not infringed (directly or indirectly) by Stemina.

          2.      On information and belief, the first set of patents is purportedly owned solely

by Metabolon, and includes United States Patent Nos. 7,433,787; 7,561,975; 7,884,318;
7,949,475; 8,131,473; and 8,175,816 (“the Technology Patents”).

          3.      On information and belief, the second set of patents is purportedly co-owned

by Metabolon and Metabolon is the exclusive licensee of the second set of patents with the

exclusive right to license the second set of patents. This set includes U.S. Patent Nos.

7,005,255; 7,329,489; 7,550,258; 7,550,260; 7,553,616; 7,635,556; 7,682,783; 7,682,784;

7,910,301; and 7,947,453 (“the Metabolomics Methods Patents”).




QB\147668.00002\17420974.1                         1
                                            PARTIES

         4.     Plaintiff Stemina is a corporation organized under the laws of the State of

Wisconsin, having its principal place of business at 504 S. Rosa Road, Suite 150, Madison,

WI 53719.

         5.     Defendant Metabolon is a corporation organized under the laws of the State of

Delaware, having its principal place of business at 617 Davis Dr., Suite 400, Durham, NC

27713.

         6.     Metabolon is purportedly the sole owner by assignment of the Technology

Patents, and a joint owner by assignment of the Metabolomics Methods Patents. Metabolon is

also purportedly the exclusive licensee of the Metabolomics Methods Patents and has the

exclusive right to license the Metabolomics Methods Patents.

                                  JURISDICTION & VENUE

         7.     This Court has subject matter jurisdiction over this action under 28 U.S.C.

§§ 1331 and 1338(a), as it arises under the United States Patent Laws, Title 35 of the United

States Code.

         8.     This Court has jurisdiction to declare the rights and other legal relations of the

parties pursuant to 28 U.S.C. §§ 2201 and 2202, because this action presents a case of actual

controversy within this Court’s jurisdiction. Metabolon and its counsel have sent

correspondence, draft license agreements, and emails to employees of Stemina concerning

alleged or potential infringement by Stemina of the Metabolomics Methods Patents and the

Technology Patents. Metabolon has specifically accused Stemina of infringing more than one

of Metabolon’s patents and has threatened Stemina with litigation.

         9.     This Court has personal jurisdiction over Metabolon. Metabolon is engaged in

substantial and not isolated activities in the State of Wisconsin and in this judicial district. For

example, in addition to sending correspondence, emails, and draft agreements to Stemina

within this judicial district concerning the patents referenced above, Metabolon regularly

sends representatives into this judicial district, including to the campus of the University of




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Wisconsin-Madison, to actively promote services provided by Metabolon that are purportedly

covered by or related to the subject matter of the Metabolomics Methods Patents and the

Technology Patents, and to solicit business in the State of Wisconsin and in this judicial

district.

        10.     Venue is proper in this judicial district under 28 U.S.C. §§ 1391.

                                   COUNT 1:
                          DECLARATION OF INVALIDITY OF
                       THE METABOLOMICS METHODS PATENTS

        11.     Stemina incorporates by reference paragraphs 1 through 10 above as though

fully set forth herein.

        12.     The claims of the Metabolomics Methods Patents are invalid, void, and

unenforceable for failure to meet the conditions for patentability specified in 35 U.S.C. § 101

et seq., including at least §§ 102 and 103.

        13.     Prior publications qualifying as prior art under § 102 teach each and every

element of the claims of the Metabolomics Methods Patents and, in combination, render

obvious the claims of the Metabolomics Methods Patents under § 103.

        14.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a

declaratory judgment.

        15.     A judicial declaration is necessary and appropriate so that Stemina may

ascertain its rights regarding the Metabolomics Methods Patents with respect to Stemina’s

activities, products, and customers.

                                    COUNT 2
                       DECLARATION OF NONINFRINGEMENT OF
                       THE METABOLOMICS METHODS PATENTS

        16.     Stemina incorporates by reference paragraphs 1 through 15 above as though

fully set forth herein.




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        17.     Stemina does not and has not infringed, directly or indirectly, any valid and

enforceable claim of the Metabolomics Methods Patents.

        18.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a

declaratory judgment.

        19.     A judicial declaration is necessary and appropriate so that Stemina may

ascertain its rights regarding the Metabolomics Methods Patents with respect to Stemina’s

activities, products, and customers.


                                       COUNT 3:
                             DECLARATION OF INVALIDITY OF
                               THE TECHNOLOGY PATENTS

        20.     Stemina incorporates by reference paragraphs 1 through 19 above as though

fully set forth herein.

        21.     The claims of the Technology Patents are invalid, void, and unenforceable for

failure to meet the conditions for patentability specified in 35 U.S.C. § 101 et seq., including

at least §§ 102 and 103.

        22.     Prior publications qualifying as prior art under § 102 teach each and every

element of the claims of the Technology Patents and, in combination, render obvious the
claims of the Technology Patents under § 103.

        23.     As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a

declaratory judgment.


                                    COUNT 4
                       DECLARATION OF NONINFRINGEMENT OF
                            THE TECHNOLOGY PATENTS

        24.     Stemina incorporates by reference paragraphs 1 through 23 above as though

fully set forth herein.



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        25.      Stemina does not and has not infringed, directly or indirectly, any valid and

enforceable claim of the Technology Patents.

        26.      As a result of the acts described in the foregoing paragraphs, there exists a

substantial controversy of sufficient immediacy and reality to warrant the issuance of a

declaratory judgment.

        27.      A judicial declaration is necessary and appropriate so that Stemina may

ascertain its rights regarding the Technology Patents with respect to Stemina’s activities,

products, and customers.

                                     PRAYER FOR RELIEF

        WHEREFORE, Stemina prays for relief against Metabolon and respectfully requests

judgment as follows:

        (a)      For a declaration that all claims of the Metabolomics Methods Patents are

invalid, void and unenforceable;

        (b)      For a declaration that Stemina does not infringe the Metabolomics Methods

Patents;

        (c)      For a declaration that all claims of the Technology Patents are invalid, void and

unenforceable;

        (d)      For a declaration that Stemina does not infringe the Technology Patents;

        (e)      For a declaration that this is an exceptional case under 35 U.S.C. § 285 and an

award to Stemina of its attorneys’ fees and expenses in this action; and




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        (f)     For such other relief as the Court may deem just and proper.

        Dated this 11th day of July, 2012.

                                                   QUARLES & BRADY LLP


                                                   /s/ Anthony A. Tomaselli
                                                   Anthony A. Tomaselli
                                                   aat@quarles.com
                                                   Kristin Graham Noel
                                                   kgn@quarles.com
                                                   Stephen J. Gardner
                                                   stephen.gardner@quarles.com
                                                   QUARLES & BRADY LLP
                                                   33 East Main Street, Suite 900
                                                   Madison, Wisconsin 53703-3095
                                                   Tel.: 608.251.5000
                                                   Fax: 608.251.9166

                                                   Attorneys for Plaintiff Stemina, Inc.




                                      DEMAND FOR JURY TRIAL

        Pursuant to Federal Rule of Civil Procedure 38(b), Stemina, Inc. hereby demands a trial

by jury of all issues so triable in this action.

        Dated this 11th day of July, 2012.

                                                   QUARLES & BRADY LLP


                                                   /s/ Anthony A. Tomaselli
                                                   Anthony A. Tomaselli
                                                   aat@quarles.com
                                                   Kristin Graham Noel
                                                   kgn@quarles.com
                                                   Stephen J. Gardner
                                                   stephen.gardner@quarles.com
                                                   QUARLES & BRADY LLP
                                                   33 East Main Street, Suite 900
                                                   Madison, Wisconsin 53703-3095
                                                   Tel.: 608.251.5000
                                                   Fax: 608.251.9166

                                                   Attorneys for Plaintiff Stemina, Inc.




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