The opinion of the court was delivered by: Judge Michael R. Barrett
This matter is before the Court upon Defendants Medicis Pharmaceutical Corporation ("Medicis") and Imaginative Research Associates, Inc.'s ("Imaginative") Motion to Dismiss and Motion to Dismiss the Amended Complaint. (Docs. 15, 19) Also before the Court is Plaintiff Prasco's Response in Opposition to Defendants' Motion to Dismiss the Amended Complaint, and Defendants' Reply thereto. (Doc. 20, 21) In addition, the Parties have provided supplemental briefing on the application of the United States Supreme Court's recent decision in MedImmune, Inc. v. Genetech, Inc., et al, 127 S.Ct. 764 (January 9, 2007). (Docs. 25, 28, 31)
I. FACTUAL AND PROCEDURAL BACKGROUND
Defendant Medicis manufactures and markets the product TRIAZ. This product has four patents associated with it: U.S. Patent Nos. 5,254,334 ('334); 5,409,706 ('706); 5,632,996 ('996); and 5,648,389 ('389). Medicis is the assignee for the '389 patent and is the licensee for the '334, '706, and '996 patents. Defendant Imaginative is the assignee for the '334, '706, and '996 patents, and licenses these patents to Medicis.*fn1 TRIAZ is an acne cleanser containing benzoyl peroxide in the concentrations 3%, 6%, and 9%. Medicis commercially markets TRIAZ as being covered by the patents-in-suit, and labels the packaging and labeling with these patent numbers.
On May 5, 2006, Prasco filed its Complaint for declaratory judgment, seeking a declaration that its product OSCION has not infringed, does not infringe, and will not infringe any valid and enforceable claim of the patents-in-suit. OSCION is a generic acne cleanser also containing benzoyl peroxide in the concentrations 3%, 6%, and 9%. OSCION is designed as a fully substitutable generic alternative to TRIAZ and intended to compete directly with it. Prior to the filing of the declaratory action, Prasco had not begun to market OSCION, and Defendants had no knowledge of Prasco's product. (Doc. 15, Ex. 1, Brandon Hokenstad Decl. ¶ 3; Doc. 15, Ex. 2, Mohan Vishnupad Decl. ¶¶ 4-5)
On July 25, 2006, Defendants filed their Motion to Dismiss Prasco's Complaint. (Doc. 15). Prasco did not respond to this motion, but instead filed an Amended Complaint on August 18, 2006. (Doc. 17) The Amended Complaint states that on June 14, 2006, Prasco commercially launched OSCION. (Doc. 17 ¶ 29). Prasco alleges that on July 28, 2006, it provided Medicis and Imaginative with a sample of OSCION, its related labeling, and an ingredient list. (Id. ¶ 31) Prasco also alleges that on July 28, 2006 it requested from Medicis and Imaginative a covenant not to sue relating to the '334, '706, '996, and '389 patents; but Medicis and Imaginative have refused this request. (Id. ¶¶ 35-38)
On September 9, 2006, Defendants filed their Motion to Dismiss the Amended Complaint. (Doc. 19) This matter is now ripe for review.
A. Motion to Dismiss Standard
Defendants bring their motions to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1). Defendants assert there is no "actual case or controversy" and therefore this court lacks subject matter jurisdiction.
The Sixth Circuit has distinguished between facial and factual attacks among motions to dismiss for lack of subject matter jurisdiction pursuant to Rule 12(b)(1). Pritchard v. Dent Wizard Intern. Corp., 210 F.R.D. 591, 592 (S.D.Ohio 2002). A facial attack on the subject matter jurisdiction alleged by the complaint merely questions the sufficiency of the pleading. Ohio Nat. Life Ins. Co. v. U.S., 922 F.2d 320, 325 (6th Cir. 1990). Defendants are bringing a factual attack. A factual attack is "not a challenge to the sufficiency of the pleading's allegations, but a challenge to the factual existence of subject matter jurisdiction." United States v. Ritchie, 15 F.3d 592, 598 (6th Cir. 1994). Therefore, this Court must "weigh the conflicting evidence to arrive at the factual predicate that subject matter jurisdiction exists or does not exist." 922 F.3d at 325. The Court may allow affidavits, documents and even a limited evidentiary hearing to resolve disputed jurisdictional facts. Id.
B. The Reasonable Apprehension of Suit Test
The Declaratory Judgment Act provides that, "[i]n a case of actual controversy within its jurisdiction . . . any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought." 28 U.S.C. § 2201(a). The Supreme Court has explained that under the Act:
The controversy must be definite and concrete, touching the legal relations of parties having adverse legal interests. It must be a real and substantial controversy admitting of specific relief through a decree of a conclusive character, as distinguished from an ...