United States District Court, D. Delaware
BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC., Plaintiffs and Counterclaim-Defendants
AUROBINDO PHARMA USA INC. and AUROBINDO PHARMA LTD., Defendants and Counterclaim-Plaintiffs. BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC., Plaintiffs,
MYLAN PHARMACEUTICALS INC., Defendant.
J. Farnan, Jr., Brain E. Farnan, Michael J. Farnan, FARNAN
LLP, Wilmington, DE Amy K. Wigmore, Gregory H. Lantier,
Heather M. Petruzzi, Tracey C. Allen, Jeffrey T. Hantson,
WILMER CUTLER PICKERING HALE AND DORR LLP, Washington, DC
Kevin S. Prussia, Andrew J. Danford, Timothy A. Cook, Kevin
M. Yurkerwich, WILMER CUTLER PICKERING HALE AND DORR LLP,
Boston, MA Attorneys for Plaintiffs Bristol-Myers Squibb
Company and Pfizer Inc.
Stamatios Stamoulis, STAMOULIS & WEINBLATT LLC,
Wilmington, DE Shannon M. Bloodworm, Brandon M. White,
PERKINS COIE LLP, Washington, D.C. Robert L. Florence, Karen
L. Carroll, PARKER POE ADAMS & BERNSTEIN LLP, Atlanta, GA
Attorneys for Defendant Mylan Pharmaceuticals Inc.
U.S. District Jndge.
a pharmaceutical patent case brought by Bristol-Myers Squibb
Company and Pfizer Inc. ("BMS" or
"Plaintiffs") pursuant to the Hatch-Waxman Act, 21
U.S.C. § 3550). (C.A. No. 17-374 D.I. I) Presently before
the Court is Defendant Mylan Pharmaceuticals Inc.'s
("MPI" or "Defendant") renewed motion to
dismiss or transfer under 28 U.S.C. § 1406(a) for
improper venue. (C.A. No. 17-374 D.I. 178) In its initial
motion to dismiss for improper venue, filed on July 25, 2017,
MPI contended that venue was improper in this District based
on the Supreme Court's decision in TC Heartland LLC
v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514, 1519
(2017), which held that § 1400(b) is the "sole and
exclusive provision controlling venue in patent infringement
actions." (C.A. No. 17-379 D.I. 15 at 3-4) On September
11, 2017, the Court denied MPI's initial motion without
prejudice, as the Court could not determine based on the
record then before it whether venue was proper in Delaware.
(See C.A. No. 17-379 D.I. 36 at 38) The Court,
therefore, ordered what it intended to be expedited,
venue-related discovery on the question of whether MPI has a
"regular and established place of business" under
the second prong of § 1400(b). (See Id. at 39,
17, 2018, after eight months of limited discovery and three
discovery dispute teleconferences, MPI renewed its motion to
dismiss, maintaining that venue is improper in this District.
The parties submitted briefing (see C.A. No. 17-374
D.I. 179, 192, 213) and the Court heard oral argument on July
18, 2018 (see Transcript ("Tr.") (C.A. No.
17-374 D.I. 233)).
reasons set forth below, the Court will grant MPI's
"venue provisions are designed, not to keep suits out of
the federal courts, but merely to allocate suits to the most
appropriate or convenient federal forum." Brunette
Mack Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706,
710 (1972). Federal Rule of Civil Procedure 12(b)(3)
authorizes a party to move to dismiss a lawsuit for improper
venue. When such a motion is filed, the Court must determine
whether venue is proper in accordance with the applicable
statutes. See Albright v. W.L. Gore & Assocs.,
Inc., 2002 WL 1765340, at *3 (D. Del. July 31, 2002).
Venue in a patent infringement action is governed solely and
exclusively by the patent venue statute, 28 U.S.C. §
1400(b). See TC Heartland, 137 S.Ct. at 1516. The
general venue statute, 28 U.S.C. § 1391(c), does not
have any application in a patent case. See Id. at
motion by the Defendant challenging venue in a patent case,
the Plaintiff bears the burden of establishing proper
venue." In re ZTE (USA) Inc., 890 F.3d 1008,
1013 (Fed. Cir. 2018). If the Court grants a Rule 12(b)(3)
motion based on improper venue, the Court "shall
dismiss, or if it be in the interest of justice, transfer
such case to any district or division in which it could have
been brought." 28 U.S.C. § 1406(a).
"it is not necessary for the plaintiff to include
allegations in his complaint showing that venue is
proper." Great W. Mining & Mineral Co. v. ADR
Options, Inc., 434 Fed.Appx. 83, 86-87 (3d Cir. 2011).
Hence, when confronted with a motion to dismiss for improper
venue, the Court may consider both the complaint and evidence
outside the complaint. See 14D Wright & Miller,
Federal Practice & Procedure § 3826 (4th ed. 2017).
The Court will accept any venue-related allegations in the
complaint as true, unless those allegations are contradicted
by the defendant's affidavits. See Bockman v. First
Am. Mktg. Corp., 459 Fed.Appx. 157, 158 n.l (3d Cir.
2012); In re First Solar, Inc. Derivative Litig.,
2013 WL 817132, at *2 (D. Del. Mar. 4, 2013). In addition,
the Court may consider affidavits submitted by the plaintiff.
See Bockman, 459 Fed.Appx. at 161 (affirming
District Court's dismissal of complaint "because
Defendants satisfied their burden of showing improper venue
by offering evidence that the wrongful acts alleged in the
Complaint did not occur in Pennsylvania, and Plaintiffs
failed to rebut that evidence").
patent venue statute, 28 U.S.C. § 1400(b), provides:
Any civil action for patent infringement may be brought in
the judicial district  where the defendant resides, or 
where the defendant has committed acts of infringement and
has a regular and established place of business.
undisputed that MPI is incorporated in West Virginia
(see C.A. No. 17-379 D.I. 1 at ¶ 2; C.A. No.
17-374 D.I. 179 at 1) and, therefore, does not
"reside" in Delaware. See TC Heartland,
137 S.Ct. at 1517 ("[A] domestic corporation
'resides' only in its State of incorporation for
purposes of the patent venue statute."). Plaintiffs ...