Bristol-Myers Squibb Co. v. Merck & Co.
| Decision Date | 13 July 2016 |
| Docket Number | Civil Action No. 15-560-GMS,Civil Action No. 15-572-GMS,Civil Action No. 14-1131-GMS |
| Parties | BRISTOL-MYERS SQUIBB CO., E. R. SQUIBB & SONS, L.L.C., ONO PHARMACEUTICAL CO., LTD., and TASUKU HONJO, Plaintiffs, v. MERCK & CO., INC. and MERCK SHARP & DOHME CORP., Defendants. |
| Court | U.S. District Court — District of Delaware |
On September 4, 2014, plaintiffs Bristol-Myers Squibb Co., E. R. Squibb & Sons, L.L.C. ("BMS"), Ono Pharmaceutical Co., Ltd. ("Ono"), and Tasuku Honjo ("Honjo"), (collectively "the Plaintiffs") filed case number 14-1131-GMS alleging infringement of U.S. Patent No. 8,728,474 ("the '474 Patent") by defendants Merck & Co., Inc. and Merck Sharp & Dohme Corp. (collectively "Merck"). (D.I. 1.) On June 30, 2015, the Plaintiffs filed case number 15-560-GMS alleging infringement by Merck of U.S. Patent No. 9,067,999 ("the '999 patent"), and on July 7, 2015, the Plaintiffs filed case number 15-572-GMS alleging infringement by Merck of U.S. Patent No. 9,073,994 ("the '994 patent"). Presently before the court is the Plaintiffs' Motion to Transfer a related case from the District of Massachusetts pursuant to 28 U.S.C. § 1404(a) (D.I. 160) and accompanying briefs. For the reasons that follow, the court will deny the Plaintiffs' motion.
Plaintiffs allege that Merck induces or contributes to infringement of the '474, '999, and '994 patents by making and selling pembrolizumab, a biologic product that Merck sells in the United States under the name Keytruda® for treatment of certain patients with melanoma or nonsmall-cell lung cancer. See Bristol-Myers Squibb Co. et al. v. Merck & Co. Inc., C.A. No. 14-1131-GMS; Bristol-Myers Squibb Co. et al. v. Merck & Co. Inc., C.A. No. 15-560-GMS; Bristol-Myers Squibb Co. et al. v. Merck & Co. Inc., C.A. No. 15-572-GMS. The three cases have not been consolidated, but have been coordinated to have identical pretrial schedules.
Non-party Dana-Farber Cancer Institute, Inc. ("Dana-Farber"), a Massachusetts nonprofit hospital headquartered in Boston, has brought suit in the District of Massachusetts challenging inventorship under 35 U.S.C. § 256 on five patents including the '474 Patent, the '999 Patent, the '994 Patent, as well as U.S. Patents Nos. 7,595,048 (the "'048 patent") and 8,168,179 (the "'179 patent"). Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd., Tasuku Honjo, E. R. Squibb & Sons L.L.C., and Bristol-Myers Squibb Co., C.A. No. 15-13443-MLW (D. Mass.). Dana-Farber alleges that Drs. Gordon Freeman and Clive Wood should also be named as inventors. Id., (D.I. 1.) On May 2, 2016, the U.S. District Court for the District of Massachusetts (the "Massachusetts court") ordered BMS, Ono, and Honjo to file a motion in this court requesting a decision on a transfer motion they had filed in the Massachusetts Case. Id., (D.I. 85) ( ). The Massachusetts Court observed that there is a "likelihood of substantial overlap" between the facts underlying Dana-Farber's inventorship challenge and Merck's invalidity defenses relating to the Honjo patents. Ex. A at 8.1
According to the Plaintiffs, transfer of the Massachusetts case would avoid the possibility of duplicative litigation, inconsistent rulings, and the need to educate more than one court on the facts underlying both disputes. (D.I. 193 at 1.) The Plaintiffs contend that Merck's allegations that the Honjo Patents are invalid are based upon work done by Drs. Freeman and Wood. (Id. at 2. ) The Plaintiffs also assert that Merck has raised the inventorship issue in its discovery requests. (Id.) Moreover, the Plaintiffs claim that Merck has alleged a Section 102(f) derivation defense based on the inventorship dispute in the Massachusetts Case and subpoenaed Drs. Freeman and Wood, Dana-Farber, and other scientists and attorneys concerning the inventorship dispute. (Id.)2
Merck objects to transfer to the extent that the Massachusetts case will be consolidated with any of the cases pending because consolidation will slow litigation. (D.I. 184 at 1.) According to Merck, the Massachusetts case involves claims that are entirely distinct from the claims and defenses at issue in the Merck cases. (Id.) Merck points out that fact discovery has ended, expert discovery will conclude in September 2016, and trial of the first case is set for April 3, -2017. (Id.) Thus, Merck argues that transfer of a later filed lawsuit, involving distinct claims from those in the Merck cases will accomplish no discovery efficiencies. (Id. at 3). In response, the Plaintiffs claim that they did not request consolidation of the Massachusetts Case with thepending Delaware Cases, but only transfer of the related Massachusetts Case so that a single court can consider the same operative set of facts regarding the challenges to the Honjo patents and minimize the possibility of inconsistent fact findings or inconsistent outcomes by two different forums. (See D.I. 193 at 1.)
Dana-Farber opposes the motion to transfer its case arguing that under 28 U.S.C. § 1404(a) it would have been impermissible to bring this case before this court. (D.I. 187 at 1.) Dana-Farber's claim for correction of inventorship arises out of collaboration activities and inventive contributions made in Massachusetts. (Id. at 9.) According to Dana-Farber, transfer under § 1404(a) is prohibited here because Dana-Farber's claim does not arise out of any contacts by Ono or Honjo with Delaware as required by section 3104(c), nor would Ono's or Honjo's contacts with Delaware have satisfied the constitutional requirement for the exercise of specific personal jurisdiction. (Id. at 9-10.)
"For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented." 28 U.S.C. § 1404(a). Under this provision, a district court may exercise "broad discretion to determine, on an individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995). The purpose of transfer is to protect litigants, witnesses, and the public from the unnecessary waste of time, energy, and money. See Virgin Wireless, Inc. v. Virgin Enters. Ltd., 201 F. Supp. 2d. 294, 299 (D. Del. 2002) (citing Van Dusen v. Barrack, 376 U.S. 612, 616 (1964)).first asks whether the action could have been brought in the proposed transferee venue and then determines whether transfer to a different forum would best serve the interests of justice and convenience." Smart Audio Techs., L.L.C. v. Apple, Inc., 910 F. Supp. 2d 718, 724 (D. Del. 2012). At each step, the defendant has the burden to demonstrate that a transfer is appropriate, Jumara, 55 F.3d at 879-80, and "unless the balance of convenience of the parties is strongly in favor of the defendant, the plaintiff's choice of forum should prevail." Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970).
A. The Propriety of the Transferee Forum
Dana-Farber argues that, as a threshold matter, the Massachusetts case is not one that "might have been brought" in Delaware, a prerequisite for transfer under § 1404(a). 28 U.S.C. § 1404(a). Specifically, Dana-Farber argues that the court could not have obtained personal jurisdiction over Japanese residents Ono and Honjo to adjudicate its inventorship claims in Delaware because the inventorship action does not arise out of the infringement claims against Merck or out of any other purposeful activities of Ono or Honjo in Delaware. (D.I. 187 at 7.)
To exercise specific personal jurisdiction over a nonresident defendant under the Delaware long-arm statute, courts must find that a plaintiff's cause of action "aris[es] from" a defendant's "jurisdictional act" such as the "transact[ion of] business." 10 Del. C. § 3104(c)(1). Delaware courts assess personal jurisdiction over nonresident defendants based on Delaware contacts sufficient to satisfy both the long-arm statute, 10 Del. C. § 3104(c), and the Due Process Clause of the Constitution. Provident Nat'l Bank v. Cal. Fed. Sav. & Loan Asso., 819 F.2d 434, 436-37 (3d Cir. 1987). The Delaware long-arm statute provides the following, in pertinent part:
Delaware courts have construed the statute as conferring jurisdiction to the maximum extent permissible under the due process clause. Transportes Aereos De Angola v. Ronair, Inc., 544 F. Supp. 858, 864 (D. Del. 1982). Under a Due Process analysis, personal jurisdiction may be either specific or general. "To establish specific jurisdiction a plaintiff must show that the defendant has minimum contacts with the state 'such that [the defendant] should reasonably anticipate being haled into court there.'" North Penn Gas Co. v. Corning Natural Gas Corp., 897 F.2d 687, 690 (3d. Cir. 1...
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