United States District Court, D. Delaware
REPORT AND RECOMMENDATION
SHERRY R. FALLON, Magistrate Judge.
On July 3, 2014, plaintiff Merck Sharp & Dohme Corp. ("Merck") filed this action against defendant Teva Pharmaceuticals USA, Inc. ("Teva"), alleging infringement of United States Patent No. 6, 127, 353 ("the '353 patent"). Pending before the court are Teva's motion to dismiss for failure to state a claim and motion for judgment on the pleadings (D.I. 8), as well as its motion to transfer venue to the District of New Jersey (D.I. 12). For the following reasons, I recommend that the court deny Teva's motion to transfer, grant Teva's motion to dismiss with leave to amend Count II of the complaint, and deny Teva's motion for judgment on the pleadings as moot.
Merck is a New Jersey corporation maintaining its principal place of business in Whitehouse Station, New Jersey. (D.I. 1 at ¶ 2) Teva is a Delaware corporation with its principal place of business in Horsham, Pennsylvania. ( Id. at ¶ 3)
On October 3, 2000, U.S. Patent No. 6, 127, 353 ("the '353 patent"), entitled Mometasone Furoate Monohydrate, Process For Making Same And Pharmaceutical Compositions, issued to Pui-Ho Yen, Charles Eckhart, Teresa Etlinger, and Nancy Levine. ( Id. at ¶ 9) The '353 patent discloses and claims novel forms of mometasone furoate monohydrate and novel pharmaceutical compositions thereof. ( Id. ) Merck is the owner by assignment of the '353 patent, and owns the approved New Drug Application No. 20762, covering mometasone furoate monohydrate metered nasal spray sold under the Nasonex® trademark. ( Id. at ¶ 10) Nasonex® nasal spray is widely used in the United States and throughout the world to treat upper respiratory diseases, including allergic and nonallergic rhinitis. ( Id. at ¶ 11)
Prior to the expiration of the '353 patent, Teva filed an abbreviated new drug application ("ANDA") with the FDA for generic mometasone furoate nasal spray ("ANDA No. 205149"), containing a certification that the '353 patent is "invalid, unenforceable, or will not be infringed." ( Id. at ¶ 13) Teva refused to make ANDA No. 205149 or samples of its proposed generic copy of Nasonex® nasal spray available to Merck. ( Id. at ¶ 14)
On July 3, 2014, Merck initiated the present action, asserting direct and contributory infringement of the '353 patent. (D.I. 1) Pursuant to Merck's conversion theory of contributory infringement, Teva would be liable for infringement even if the generic copy of Nasonex® nasal spray sold by Teva contains only anhydrous mometasone furoate, because at least some of the mometasone furoate contained in Teva's product converts to the allegedly infringing monohydrate form during the proposed shelf life of the product. (D.I. 18 at 7-8) Paragraph 15 of the complaint states that, "[u]pon information and belief, Teva's proposed generic copy would contain mometasone furoate in such a form that would infringe the '353 patent." (D.I. 1 at ¶ 15) Paragraph 25 further alleges that,
[o]n information and belief, Teva has or will have knowledge that if it were to receive approval from the FDA to market the product described in ANDA No. 205149 and made said product available for sale and/or use during the proposed shelf life of the product, such activities would result in the sale and/or use of an infringing article that is not a staple article or commodity of commerce suitable for substantial noninfringing use, but rather is especially made and/or adapted for use in the direct infringement of the '353 patent.
( Id. at ¶ 25)
Teva informed Merck of its intention to move to transfer the case to New Jersey, and counsel for the parties held a meet and confer on July 28, 2014. (D.I. 13 at 2) Merck previously asserted the '353 patent against Apotex Inc. ("Apotex") in the United States District Court for the District of New Jersey on December 18, 2009 (the "Apotex case"). (D.N.J. C.A. No. 09-6373-PGS-TJB, D.I. 1) The district judge in the Apotex case issued a decision on June 15, 2012, holding that Merck had failed to establish that Apotex's anhydrous mometasone furoate product infringed the asserted claims of the '353 patent directed to mometasone furoate monohydrate. See Schering Corp. v. Apotex Inc., 2012 WL 2263292 (D.N.J. June 15, 2012). The Federal Circuit affirmed the district court's decision on June 10, 2013. See Merck Sharp & Dohme Corp. v. Apotex Inc., 517 F.Appx. 939 (Fed. Cir. 2013).
A. Transfer of Venue
1. Legal Standard
Section 1404(a) of Title 28 of the United States Code grants district courts the authority to transfer venue "[f]or the convenience of parties and witnesses, in the interests of justice... to any other district or division where it might have been brought." 28 U.S.C. § 1404(a). Much has been written about the legal standard for motions to transfer under 28 U.S.C. § 1404(a). See, e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011); Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995); Helicos Biosciences Corp. v. Illumina, Inc., 858 F.Supp.2d 367 (D. Del. 2012).
Referring specifically to the analytical framework described in Helicos, the court starts with the premise that a defendant's state of incorporation has always been "a predictable, legitimate venue for bringing suit" and that "a plaintiff, as the injured party, generally ha[s] been accorded [the] privilege of bringing an action where he chooses.'" 858 F.Supp.2d at 371 (quoting Norwood v. Kirkpatrick, 349 U.S. 29, 31 (1955)). The Third Circuit in Jumara instructs that "[t]he burden of establishing the need for transfer... rests with the movant" and that, "in ruling on defendants' motion, the plaintiff's choice of venue should not be lightly disturbed." 55 F.3d at 879 (citation omitted).
The Third Circuit recognizes that,
[i]n ruling on § 1404(a) motions, courts have not limited their consideration to the three enumerated factors in § 1404(a) (convenience of parties, convenience of witnesses, or interests of justice), and, indeed, commentators have called on the courts to "consider all relevant factors to determine whether on balance the litigation would more ...