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Genentech, Inc. v. Amgen Inc.

United States District Court, D. Delaware

January 22, 2018

GENENTECH, INC. and CITY OF HOPE, Plaintiffs,
v.
AMGEN INC. Defendant,

          Michael P. Kelly, Esquire and Daniel M. Silver, Esquire of McCarter & English, LLP, Wilmington, Delaware. Counsel for Plaintiffs Genentech, Inc. and City of Hope. Of Counsel for Plaintiff Genentech, Inc.: Paul B. Gaffney, Esquire, David I. Berl, Esquire, Thomas S. Fletcher, Esquire, Teagan J. Gregory, Esquire, and Jonathan S. Sidhu, Esquire of Williams & Connolly LLP, Washington, D.C.

          Melanie K. Sharp, Esquire and James L. Higgins, Esquire of Young Conaway Stargatt & Taylor, LLP, Wilmington, Delaware. Counsel for Defendant Amgen Inc. Of Counsel: Siegmund Y. Gutman, Esquire of Proskauer Rose LLP, Los Angeles, California and Steven M. Bauer, Esquire of Proskauer Rose LLP, Boston, Massachusetts.

          MEMORANDUM OPINION

          SLEET DISTRICT JUDGE

         I. INTRODUCTION

         Plaintiffs Genentech, Inc. and City of Hope (collectively, "Plaintiffs") have filed two patent infringement actions in this court against defendant Amgen Inc. ("Amgen") based on Amgen's plans to commercialize Mvasi®, a biosimilar version of Genentech's anticancer medicine Avastin®. Pursuant to 28 U.S.C. § 1404(a), Amgen has moved to transfer these actions to the Central District of California, where its declaratory judgment action regarding the same controversy is pending. (Civ. No. 17-1407 at D.I. 11; Civ. No. 17-1471 at D.I. 13).[1] The court has subject matter jurisdiction pursuant to28U.S.C. §§ 1331 and 1338(a). For the reasons stated below, the motion is denied.

         II. BACKGROUND

         Genentech asserts that Amgen's Mvasi® infringes on 20 patents it owns exclusively, 2 patents it co-owns with City of Hope, and 2 patents it licenses exclusively with the sole right to enforce. (D.I. 2 ¶¶ 30-31). Genentech is a Delaware corporation with its principal place of business in San Francisco, California. (Id. at ¶ 19-21). City of Hope is a California nonprofit organization with its principal place of business in Duarte, California. (Id.). Amgen is a Delaware corporation with its principal place of business in Thousand Oaks, California. (Id.).

         Altogether, Plaintiffs have filed three lawsuits in this court over Amgen's plans to commercialize Mvasi®. In the first lawsuit, filed in February 2017, Plaintiffs sought a declaratory judgment that Amgen violated Section 262(l)(2)(A) of the Biologies Price Competition and Innovation Act ("BPCIA") by producing only its Abbreviated Biologic License Application ("aBLA") and no other information that described "the process or processes used to manufacture the biological product that is the subject of such application." (Civ. No. 17-165, D.I. 24 at 1-2 (quoting 42 U.S.C. § 262(l)(2)(A)). The BPCIA sets forth a "carefully calibrated scheme" requiring the "reference product sponsor" (i.e., Plaintiffs) and the "applicant" (i.e., Amgen) to disclose and exchange information in furtherance of "preparing to adjudicate, and then adjudicating, claims of infringement." Sandoz, Inc. v. Amgen, Inc., 137 S.Ct. 1664, 1670 (2017). Thus, Plaintiffs alleged that Amgen was not complying with the steps in the BPCIA's scheme, colloquially referred to as the "patent dance." (D.I. 24 at 1). Under the BPCIA, the patent dance ends with the reference product sponsor, not the applicant, bringing claims as part of an "immediate patent infringement action." 42 U.S.C. § 262(l)(6).

         Amgen moved to dismiss Plaintiffs' declaratory judgment action as procedurally improper in light of Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015). (Civ. No. 17-165 at D.I. 11). In Sandoz, the Federal Circuit held that any alleged non-compliance with Section 262(l)(2)(A) should be addressed as part of the "immediate patent infringement action" contemplated by the BPCIA or by a declaratory judgment action pursuant to 42 U.S.C. § 262(l)(9)(C).[2] 794 F.3d at 1357. The court agreed with Amgen and dismissed the case. (Civ. No. 17-165 at D.I. 16).

         Thereafter, the parties continued the patent dance. (D.I. 24 at 2). Plaintiffs identified 27 patents they reasonably believed could be asserted against Amgen, exchanged contentions with Amgen regarding those patents, and then met with Amgen, sometime in September 2017, to conduct "good faith negotiations" over which of the 27 patents to include in their "immediate patent infringement action." (Id. at 2-3). Plaintiffs proposed including all of the listed patents save two. (Id.).

         Section 262(l)(5) of the BPCIA expects the applicant to either agree or disagree with the reference product sponsor's proposed list of patents before the reference product sponsor files its "immediate patent infringement action." 42 U.S.C. § 262(l)(5). Amgen did not respond to Plaintiffs' proposal. (D.I. 24 at 2-3). Instead, on October 6, 2017, Amgen filed a declaratory judgment action in the Central District of California asserting claims of non-infringement, invalidity, and unenforceability that essentially mirrored the claims Plaintiffs had proposed. (Id. at 2). Plaintiffs responded by filing their complaint in Civ. No. 17-1407 a few hours later. (Id.). That same day, after filing the declaratory judgment action, Amgen told Plaintiffs that their "immediate patent infringement action" should include all of the listed patents. (Id. at 3). According to Plaintiffs, this communication satisfied Amgen's obligations under Section 262(l)(5) and triggered Plaintiffs' thirty-day deadline to file their "immediate patent infringement action." (Id. (citing 42 U.S.C. § 262(l)(6)). Plaintiffs filed their complaint in Civ. No. 17-1471 twelve days later.

         III. STANDARD OF REVIEW

         Under 28 U.S.C. § 1404(a), a district court has "broad discretion to determine, on an individualized, case-by-case basis, " whether or not "to transfer any civil action to any other district or division where it might have been brought." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995). The burden of establishing the need for transfer rests with the movant. Id. at 879.

         IV. DISCUSSION

         Amgen makes two arguments in support of its motions to transfer. First, the Jumara factors that traditionally guide the court's analysis on a motion to transfer weigh heavily in its favor. (D.I. 11 at 2 (citing Jumara, 55 F.3d at 879-80)). Second, transfer is warranted under the first-to-file rule. (Mat 5). Each of these arguments will be addressed in turn.

         A. The Jumara Factors.

         In deciding a motion to transfer, the court traditionally employs a two-step inquiry. First, the court must determine whether the action could have been brought in the proposed transferee district. Endeavor MeshTech, Inc. v. Aclara Tech. LLC, 2015 WL 849211, at *1 (D. Del. Feb. 25, 2015). If yes, then second, the court considers whether transfer would "best serve the interests of justice and convenience." Id. (quoting Smart Audio Techs., LLC v. Apple, Inc.,910 F.Supp.2d 718, 724 (D. Del. 2012)). The parties do not dispute that Plaintiffs' actions could have been brought in the Central District of California. Thus, the court will focus on the second step, whether transfer best ...


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