United States District Court, D. Maryland, Northern Division
WILLIAM D. QUARLES, Jr., District Judge.
Mirowski Family Ventures, LLC ("Mirowski") sued Boston Scientific Corp. and others (collectively, "Boston Scientific") in the Circuit Court for Montgomery County for breach of contract and other state law claims. ECF No. 2. Boston Scientific removed to this Court. ECF No. 1. Pending are Mirowski's motion to remand, ECF No. 72, and Boston Scientific's motion for leave to file a surreply, ECF No. 105. No hearing is necessary. Local Rule 105.6 (D. Md. 2011). For the following reasons, the motion to remand will be granted in part and denied in part, and the motion to file a surreply will be denied.
Mirowski is the owner of a now-expired patent (the "'288 patent"),  which covers technology used in implantable cardioverter defibrillators ("ICDs"). See ECF No. 78 at 9-10. In 1996, Mirowski and its exclusive licensee sued St. Jude Medical, Inc. ("St. Jude") in the Southern District of Indiana alleging, inter alia, infringement of the '288 patent. ECF No. 73-12 at 3-4. The jury awarded Boston Scientific and Mirowski damages for infringement of a different patent (the "'472 patent") but found no infringement of the '288 patent. Id. at 4. The judge, however, awarded St. Jude judgment as a matter of law, concluding that the patents were invalid. Id.
Citing this ruling, Boston Scientific informed Mirowski that it would no longer pay royalties on the invalid '288 patent. See id. In January 2004, Boston Scientific and Mirowski entered an agreement to resolve their dispute about royalties (the "2004 Agreement"). See id. at 5. The Federal Circuit subsequently reversed the district court's invalidity ruling with respect to claim 4 of the '288 patent, triggering payment obligations for Boston Scientific under the 2004 Agreement. See id. at 5-6; Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1351 (Fed. Cir. 2009). Thereafter, a dispute arose between Mirowski and Boston Scientific about Boston Scientific's performance of these obligations. See ECF No. 73-12 at 6.
On May 31, 2011, Boston Scientific sued Mirowski in the Southern District of Indiana, Judge William T. Lawrence presiding, seeking a declaratory judgment that its ICD products do not infringe the '288 patent, that it had satisfied its royalty obligations to Mirowski, and that it was not in breach of any contract between the parties (the "Indiana litigation"). See ECF No. 73-2 at 8-10 (complaint). Mirowski counterclaimed for breach of contract, breach of the implied covenant of good faith and fair dealing, breach of fiduciary duty, unjust enrichment, constructive fraud, and disgorgement of profits. See ECF No. 78-10 at 43-56 (answer and counterclaims). On October 24, 2011, Boston Scientific answered Mirowski's counterclaims, asserting defenses which included, inter alia, that "[a]s asserted, the claims of the Mirowski patents are invalid under the patent laws of the United States, for failure to comply with the provisions of Title 35 of the United States Code... including... 35 U.S.C. § 102-103." ECF No. 104-4 at 23.
On February 21, 2013, Boston Scientific, by letter, advised Judge Lawrence that the Supreme Court's recent decision in Gunn v. Minton, 133 S.Ct. 1059 (2013), "raise[d] a serious question of whether the Court still has jurisdiction over the claims and counterclaims in this case." ECF No. 73-3 at 1. Judge Lawrence agreed, finding that Boston Scientific's claims did not "arise under" federal law, because-under the "mirror-image" approach applied to declaratory judgment actions-Mirowski could not file a patent infringement claim against Boston Scientific and the remaining claims were state law claims. See ECF No. 73-12 at 7-12. Judge Lawrence also held that, under Gunn, the suit did not fall into the "special and small category of cases" in which there is "arising under" jurisdiction even though the case only involves state law claims. See id. at 12-15. Accordingly, on July 29, 2013, Judge Lawrence dismissed the case for lack of subject matter jurisdiction. Id. at 16. The parties did not appeal. See ECF No. 73 at 17-18.
On February 22, 2013, Mirowski sued Boston Scientific in the Circuit Court for Montgomery County, Maryland, Judge Ronald B. Rubin presiding, for breach of contract and other state law claims. See ECF No. 2. Mirowski's claims were almost identical to the counterclaims it had brought in the Indiana litigation. See id. at 39-57.
The parties actively litigated in the Maryland court for several months. See, e.g., ECF Nos. 73-5, 73-6, 73-7 (defendants' motions filed in Maryland court). On June 27, 2013, Judge Rubin held a scheduling hearing with the parties. ECF No. 73-10 at 3. At the hearing, Judge Rubin ordered Boston Scientific to inform Mirowski "within 10 days whether they will answer or further move as to the complaint, and whether they will or won't file any counterclaims." Id. at 7. On July 10, 2013, Boston Scientific's counsel emailed Mirowksi's counsel stating that it "currently intends to plead as a counterclaim in the Maryland case that, as asserted by [Mirowski], the claims of the Mirowski patents are invalid." ECF No. 73-9 at 2.
On August 1, 2013, Mirowski filed an amended complaint, which eliminated its breach of fiduciary claim but otherwise asserted the same causes of action as its original complaint. See ECF No. 35. On August 19, 2013, Boston Scientific filed an amended answer and counterclaim. ECF No. 104-4 at 30. The counterclaim sought a declaratory judgment "that claim 4 of the '288 patent, as asserted by Mirowski, is invalid for failure to meet the conditions of patentability and/or otherwise comply with the requirements of 35 U.S.C. §§ 102-103." Id. On August 23, 2013, Boston Scientific moved for additional claim construction on claim 4. ECF No. 73-7. On September 5, 2013, about five months before the scheduled trial, Judge Rubin denied Boston Scientific's motion for additional claim construction, holding-as Judge Lawrence had similarly ruled in the Indiana litigation-that claim 4 "already had been properly construed and... affirmed on appeal" in the St. Jude litigation. See ECF No. 73-8 at 4-6. On September 10, 2013, Boston Scientific removed to this Court, asserting that this case is removable under 28 U.S.C. § 1454 "[on] the basis of [its patent invalidity] counterclaim." ECF No. 1 at 2 (notice of removal).
On September 19, 2013, Mirowski moved to remand. ECF Nos. 72-73. In the motion, Mirowski also requested an award of attorneys' fees and expenses incurred because of the removal. ECF No. 73 at 32-36. On October 3, 2013, Boston Scientific opposed the motion. ECF No. 78. On October 21, 2013, Mirowski replied. ECF No. 104. On October 24, 2013, Boston Scientific moved for leave to file a surreply. ECF No. 105. On October 29, 2013, Mirowski opposed the motion. ECF No. 106. On November 6, 2013, Boston Scientific replied. ECF No. 107.
Boston Scientific requests leave to file a surreply "for the sole purpose of addressing certain arguments and authority raised for the first time in [Mirowski's] reply." ECF No. 105 at 1. Boston Scientific notes that Mirowski's "motion to remand almost entirely ignored the America Invents Act" and only in the reply addresses the impact of the new law on the case's removability. See id. at 1-2. Mirowski argues that a surreply is unwarranted, ...