IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

ROXANE LABORATORIES, INC.,

Plaintiff,

vs. Civil Action 2:12-cv-312

Judge Watson

Magistrate Judge King

ABBOTT LABORATORIES,

Defendant.

OPINION AND ORDER

This matter is before the Court on Roxane’s Motion for Leave to

File Under Seal an Amended Complaint to Add Party (“Plaintiff’s Motion

to Amend”), Doc. No. 42, in which plaintiff seeks to amend the

Complaint to add AbbVie Inc. (“AbbVie”), as a party. Defendant Abbott

Laboratories (“Abbott”) opposes that motion on the basis that AbbVie

should be substituted as a defendant under Rule 25© of the Federal

Rules of Civil Procedure. Abbott Laboratories’ Memorandum in Response

to Roxane Laboratories, Inc.’s Motion for Leave to File an Amended

Complaint to Add New Party, Doc. No. 45. Plaintiff has filed a reply. 

Plaintiff’s Reply Brief in Further Support of its Motion to for (sic)

Leave to File an Amended Complaint to Add New Party (“Plaintiff’s

Reply”), Doc. No. 47. 

Also before the Court is Defendant Abbott Laboratories’ Motion to

Substitute AbbVie Inc. as the Defendant in this Action (“Abbott’s

Motion to Substitute”), Doc. Nos. 43, 44. Plaintiff opposes that

motion on the basis that AbbVie should be joined as a party. 

1

Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 1 of 6 PAGEID #: <pageID>
Plaintiff’s Brief in Opposition to Abbott’s Motion to Substitute

AbbVie Inc. as the Defendant in This Action (“Plaintiff’s Response to

Abbott’s Motion to Substitute”), Doc. No. 46. Abbott has filed a

reply. Reply in Support of Defendant Abbott Laboratories’ Motion to

Substitute Abbvie Inc. as the Defendant in This Action (“Abbott’s

Reply”), Doc. No. 49. 

Plaintiff instituted this action on April 10, 2012, seeking a

declaration of invalidity and noninfringement in connection with two

patents held by Abbott relating to the drug Norvir®. The patents

involved in this case were subsequently assigned to AbbVie. See

Plaintiff’s Reply, pp. 1-2. AbbVie is currently a wholly owned

subsidiary of Abbott that, due to restructuring at Abbott, will soon

take over Abbott’s research-based, proprietary pharmaceutical business

and become an independent company. Abbott’s Reply, p. 1. 

Plaintiff does not dispute that AbbVie is the owner of the

patents at issue in this case, that “AbbVie should be a party to this

lawsuit,” or that Rule 25 is a proper mechanism by which to join

AbbVie in the case. Plaintiff’s Reply, pp. 1-2. Plaintiff argues,

however, that AbbVie should be joined – not substituted – as a party

because this case “will proceed more efficiently if Abbott remains a

defendant.” Id. at p. 3. Specifically, plaintiff argues that

discovery is “inexorably intertwined with Abbott” because Norvir® was

developed at Abbott, Abbott employees are named inventors of the

patents at issue in this case, and the patents were originally

assigned to Abbott. Plaintiff’s Response to Abbott’s Motion to

Substitute, p. 3. According to plaintiff, Abbott would be unable to

2

Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 2 of 6 PAGEID #: <pageID>
provide discovery in an “efficient manner” if AbbVie is substituted as

the only defendant. Id. at pp. 3-4. Plaintiff also argues that

Abbott should remain a party because Abbott is potentially liable for

attorneys’ fees and it “is not clear that the full interest in the

suit has been transferred to AbbVie such that AbbVie would in fact be

liable for such costs and fees.” Id. at p. 4. 

Abbott argues that the complete transfer of discoverable

information from assignor to assignee is not a requirement for

substitution under Rule 25(c) and that it would be improper to

maintain Abbott as a party simply for purposes of discovery. Abbott’s

Reply, p. 2. Abbott also maintains that it “has properly transferred

all of its rights, title, and interest in the patents-in-suit and

Norvir® to AbbVie, and that AbbVie has assumed all of Abbott’s

potential liabilities in connection with Norvir® litigation. Id. at

p. 3.

Rule 25(c) provides that, “[i]f an interest is transferred, the

action may be continued by or against the original party unless the

court, on motion, orders the transferee to be substituted in the

action or joined with the original party.” Fed. R. Civ. P. 25(c). 

Rule 25 is a “procedural device designed to facilitate the conduct of

a case, and does not affect the substantive rights of the parties or

the transferee.” Iron Workers Local No. 25 Pension Fund v. Watson

Wyatt & Co., No. 04-40243, 2008 WL 1924884, at *1 (E.D. Mich. Apr. 30,

2008) (citing 6 Moore's Federal Practice, § 25.32 (Matthew Bender 3rd

Ed.)). “‘Rule 25(c) does not require that anything be done after an

interest has been transferred.’” Blachy v. Butcher, 221 F.3d 896, 911

3

Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 3 of 6 PAGEID #: <pageID>
(6th Cir. 2000) (quoting Luxliner P.L. Export, Co. v. RDI/Luxliner,

Inc., 13 F.3d 69, 71 (3rd Cir. 1993)). Rather, “‘[t]he rule expressly

permits parties to continue in an action, even if they do not remain

the real party in interest, as long as the cause of action itself

survives the transfer to the new party.’” Verizon Advanced Data Inc.

v. FrogNet, Inc., No. 05-cv-955, 2011 WL 6340262, at *11 (S.D. Ohio

Dec. 19, 2011) (quoting ELCA Enters., Inc. v. Sisco Equip. Rental &

Sales, Inc., 53 F.3d 186, 191 (8th Cir. 1995)). Because Rule 25(c) is

merely a procedural device designed to facilitate the conduct of a

case, a decision under the Rule generally falls within the district

court’s discretion. Raymond v. Tenn. Valley Auth., No. 3:09-CV-48,

2012 WL 2191625, at *2 (E.D. Tenn. June 14, 2012) (citing Luxliner

P.L. Export, Co., 13 F.3d at 71). See also Bamerilease Capital Corp.

v. Nearburg, 958 F.2d 150, 154 (6th Cir. 1992) (citing Bauer v.

Commerce Union Bank, 859 F.2d 438, 441 (6th Cir. 1988)).

The Court agrees with Abbott that it would be imprudent to

maintain Abbott as a party simply for the ease of discovery. However,

it is unclear from the record whether AbbVie has assumed all of

Abbott’s potential liabilities in connection with this case. See

Abbott’s Motion to Substitute, Doc. No. 44, Exhibit B; Abbott’s Reply,

Exhibit B. The assignment agreements attached to Abbott’s Motion to

Substitute and Abbott’s Reply are redacted such that the Court is

unable to determine if AbbVie has assumed liability for any attorneys’

fees, should such fees be awarded to plaintiff in this case. Under

the circumstances, the Court will exercise its discretion under Rule

25(c) and will join AbbVie Inc., as a defendant along with defendant

4

Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 4 of 6 PAGEID #: <pageID>
Abbott. See Melton v. Bank of Lexington, No. 02-1152 B/P, 2008 WL

867896, at *1 (W.D. Tenn. Mar. 28, 2008) (exercising discretion under

Rule 25(c) to join parties – rather than substitute parties – even

though the record provided that the joined party assumed all the debts

and liabilities of the original defendant).

Accordingly, Abbott’s Motion to Substitute, Doc. Nos. 43, 44, is

DENIED. Plaintiff’s Motion to Amend, Doc. No. 42, is GRANTED.1 

Plaintiff shall file an amended complaint reflecting the addition

of AbbVie Inc., as a named defendant within ten (10) days from the

date of this order.

November 14, 2012 s/ Norah McCann King 

 Norah McCann King

 United States Magistrate Judge

1

 The Preliminary Pretrial Order, Doc. No. 29, requires that all

motions for leave to amend the pleadings be filed, if at all, by April 1,

2013. 

5

Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 5 of 6 PAGEID #: <pageID>
Case: 2:12-cv-00312-MHW-NMK Doc #: 55 Filed: 11/14/12 Page: 6 of 6 PAGEID #: <pageID>