United States District Court, D. Delaware
GENENTECH, INC. and CITY OF HOPE, Plaintiffs,
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.
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). The court has subject matter jurisdiction
pursuant to28U.S.C. §§ 1331 and 1338(a). For the
reasons stated below, the motion is denied.
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.
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).
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). 794 F.3d at 1357.
The court agreed with Amgen and dismissed the case. (Civ. No.
17-165 at D.I. 16).
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.).
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
STANDARD OF REVIEW
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
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.
The Jumara Factors.
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 ...