No Do-Overs: Voluntary Dismissal Does Not Reset Deadline for Stay

Written by: Jeremiah S. Helm, Ph.D.

ASCENDIS PHARMA A/S v. BIOMARIN PHARMACEUTICAL INC.

Before Lourie, Chen, and Stoll.  Appeal from the United States District Court for the Northern District of California.

Summary:  A respondent in an ITC proceeding may not seek a mandatory stay of their refiled declaratory judgment action in a district court action involving the same parties after they had previously filed a declaratory judgment action and failed to meet the deadline to seek a stay under 28 U.S.C. § 1659(a)(2).

BioMarin Pharmaceutical Inc. brought an ITC action against Ascendis accusing certain drug products of patent infringement.  Ascendis filed for declaratory judgment of non-infringement in district court.  After waiting more than 30 days, Ascendis filed a notice of voluntary dismissal without prejudice.  Ascendis explained that it intended to refile its complaint and seek a mandatory stay under 28 U.S.C. § 1659(a)(2).  Ascendis then filed a new, nearly identical, declaratory judgment complaint and soon thereafter filed for a mandatory stay.  BioMarin opposed the stay as untimely.  The district court entered a temporary stay and denied Ascendis’s request for the mandatory stay as moot.  Ascendis appealed.

The Federal Circuit affirmed the denial of the mandatory stay, though it disagreed that the temporary stay mooted Ascendis’s request.  The court explained that a request for a mandatory stay under 28 U.S.C. § 1659(a)(2) must be made within 30 days after a district court action is filed.  Ascendis did not request a mandatory stay within 30 days of its initially filed declaratory judgment action and instead dismissed its complaint with the goal of resetting the deadline.  Applying common-law principles and analyzing the statutory text and history, the Federal Circuit explained that a voluntary dismissal cannot be used for the purpose of circumventing the statute’s explicit requirement.  Therefore, the court held Ascendis’s request for a mandatory stay under 28 U.S.C. § 1659(a)(2) was untimely.

Co-Author: Saba Zamani (NY State Bar Pending)

Editor: Sean Murray