NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is
not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1463
APOTEX INC. (formerly known as TorPharm, Inc.)
and APOTEX CORP.,
Plaintiffs-Appellants,
v.
PFIZER INC. and WARNER-LAMBERT COMPANY
(now known as Warner-Lambert Company LLC),
Defendants-Appellees.
__________________________
DECIDED: April 11, 2005
__________________________
Before MAYER, Circuit Judge, PLAGER, Senior Circuit Judge, and GAJARSA, Circuit
Judge.
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 of
jurisdiction. Torpharm, Inc. v. Pfizer, Inc., No. 03-CV-990, 2004 WL 1465756 (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, Pfizer covenanted not to sue Apotex
for infringement of U.S. Patent No. 4,743,450. A covenant not to sue, such as that
provided by Pfizer, moots an action for declaratory judgment. See Amana
Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852, 855 (Fed. Cir. 1999) (“[A] covenant
not to sue . . . is sufficient to divest a trial court of jurisdiction over a declaratory
judgment action.”). As a result, the judgment and opinion of the district court are
vacated and the case is remanded with instructions to dismiss for lack of jurisdiction.
See U.S. Bancorp Mortgage Co. v. Bonner Mall P’ship, 513 U.S. 18, 23 (1994)
(“[V]acatur must be granted where mootness results from the unilateral action of the
party who prevailed in the lower court.”); Najjar v. Ashcroft, 273 F.3d 1330, 1340 (11th
Cir. 2001); Mayfield v. Dalton, 109 F.3d 1423, 1427 (9th Cir. 1997).
COSTS
Apotex shall have its costs.
04-1463 2