Seagen Inc. v. Daiichi Sankyo Co.

• Decision Date: 28 June 2021
• Docket Number: CIVIL ACTION NO. 2:20-CV-00337-JRG
• Citation: 546 F.Supp.3d 515
• Parties: SEAGEN INC., Plaintiff, v. DAIICHI SANKYO CO., LTD., Defendant.
• Court: U.S. District Court — Eastern District of Texas

546 F.Supp.3d 515

SEAGEN INC., Plaintiff,

v.DAIICHI SANKYO CO., LTD., Defendant.

CIVIL ACTION NO. 2:20-CV-00337-JRG

United States District Court, E.D. Texas, Marshall Division.

Signed June 28, 2021

Michael A. Jacobs, Matthew A. Chivvis, Morrison & Foerster LLP, San Francisco, CA, Andrea Leigh Fair, Charles Everingham, IV, Thomas John Ward, Jr., Ward, Smith & Hill, PLLC, Longview, TX, Bryan Joseph Wilson, Hyun Kyu Christopher Han, Pieter de Ganon, Teresa Angela MacLean, Morrison & Foerster, Palo Alto, CA, James Travis Underwood, Gillam & Smith LLP, Tyler, TX, Janet S. Kim, Morrison & Foerster, San Diego, CA, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, for Plaintiff.

Joseph M. O'Malley, Jr., Ashley Mays-Williams, Isaac S. Ashkenazi, Justin T. Fleischacker, Preston K. Ratliff, II, Paul Hastings LLP, New York, NY, Deron R. Dacus, Shannon Marie Dacus, The Dacus Firm, PC, Tyler, TX, Gregory Blake Thompson, James Mark Mann, Mann Tindel & Thompson, Henderson, TX, Jeffrey A. Pade, Paul Hastings LLP, Washington, DC, Kyotaro Ozawa, Paul Hastings LLP, Minato-ku, Tokyo, Japan, for Defendant.

MEMORANDUM OPINION AND ORDER

RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE

Before the Court is Defendant Daiichi Sankyo Co., Ltd.’s ("DSC") Rule 12(b) Motion to Dismiss for Lack of Subject Matter Jurisdiction and Lack of Personal Jurisdiction (the "Motion to Dismiss") (Dkt. No. 22) and Motion to Transfer Under 28 U.S.C. § 1404 to the District of Delaware (the "Motion to Transfer"). Plaintiff Seagen Inc. ("Seagen") opposes both motions. For the reasons stated herein, both the Motion to Dismiss and the Motion to Transfer are DENIED .

I. BACKGROUND

Plaintiff Seagen, a biotechnology company incorporated in Delaware and based in Washington State, was granted U.S. Patent No. 10,808,039 (the " ’039 patent" or the "asserted patent") on October 20, 2020. (Complaint, Dkt. No. 1 at ¶ 6; U.S. Pat. No. 10,808,039 ). Two minutes after midnight (Eastern Time) on the issue date, Seagen filed this action for infringement against DSC, a Japanese pharmaceutical company incorporated under the laws of Japan. (Dkt. No. 1 at ¶ 7). The ’039 patent is titled "Monomethylvaline Compounds Capable of Conjugation to Ligands" and is directed to certain antibody-drug conjugates. (Id. ¶ 17; ’039 patent ). Seagen alleges that DS-8201, a cancer drug manufactured by DSC and sold under the name Enhertu, infringes the ’039 patent. (Id. at ¶¶ 21–29).

DSC has moved to dismiss this action under Fed. R. Civ. P. 12(b)(1) and 12(b)(2). It argues that Seagen's suit was filed prematurely, which would deprive the Court of subject-matter jurisdiction. DSC also argues that the Court cannot exercise personal jurisdiction over it. Separately, DSC has moved to transfer this case to the District of Delaware on the basis of convenience under 28 U.S.C. § 1404(a). The parties undertook substantial discovery on jurisdiction and venue, including a discovery dispute that required resolution by the Court. (Dkt. No. 81). Now, after careful consideration of the briefing, including the supplemental briefing, (Dkt. Nos. 22, 24, 66, 67, 69, 70, 76, 77, 99, 100, 103, 104, 105), and for the reasons stated herein, the Court is of the opinion that both motions should be DENIED .¹

II. LEGAL STANDARDS

A. Subject-Matter Jurisdiction

A district court can, and in fact must, dismiss a civil action under Fed. R. Civ. P. 12(b)(1) if the court finds that it lacks constitutional or statutory subject-matter jurisdiction when the action was filed. "It has long been the case that ‘the jurisdiction of the court depends upon the state of things at the time of the action brought.’ " Grupo Dataflux v. Atlas Global Grp. , 541 U.S. 567, 570, 124 S.Ct. 1920, 158 L.Ed.2d 866 (2004) (quoting Mollan v. Torrance , 9 Wheat. 537, 539, 22 U.S. 537, 6 L.Ed. 154 (1824) ). In the context of patent infringement, there can be no jurisdiction if the patent-in-suit has not yet issued at the time the complaint was filed, even if the patent later issues. See GAF Bldg. Materials Corp. v. Elk Corp. of Dallas , 90 F.3d 479, 483 (Fed. Cir. 1996).

B. Personal Jurisdiction

A federal district court has personal jurisdiction over a party if the party would be subject to personal jurisdiction in a court of general jurisdiction in the forum state. See Fed. R. Civ. P. 4(k)(1)(A). When a party is not a resident of that state, the exercise of personal jurisdiction must comport with both the state's "long-arm statute" and constitutional principles of due process. Daimler AG v. Bauman , 571 U.S. 117, 125, 134 S.Ct. 746, 187 L.Ed.2d 624 (2014). "Because the Texas long-arm statute extends to the limits of federal due process, the two-step inquiry collapses into one federal due process analysis." Johnston v. Multidata Sys. Int'l Corp. , 523 F.3d 602, 609 (5th Cir. 2008). Federal Circuit law applies to determinations of personal jurisdiction "when a patent question exists." Celgard, LLC v. SK Innovation Co., Ltd. , 792 F.3d 1373, 1377 (Fed. Cir. 2015).

Due process requires that a party have sufficient minimum contacts with the forum state such that the exercise of jurisdiction would not offend traditional notions for fair play and substantial justice. Int'l Shoe Co. v. Washington , 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). In assessing whether due process is satisfied, the Federal Circuit considers: (1) whether the defendant purposefully directed its activities at residents of the forum state; (2) whether the claim arises out of or relates to those activities; and (3) whether the exercise of jurisdiction would be fair and reasonable. Celgard , 792 F.3d at 1377.

C. Venue and Convenience

A foreign defendant may not challenge the propriety of venue in a United States District Court, but it may move to transfer for convenience under 28 U.S.C. § 1404(a). In re Princeton Digital Image Corp. , 496 F. App'x 73, 74 (Fed. Cir. 2012). Under the change-of-venue statute, "a district court may transfer any civil action to any other district or division where it might have been brought" for the purpose of convenience and in the interest of justice. 28 U.S.C. § 1404(a). To prove that a suit "might have been brought" in the transferee forum, the movant must establish that the transferee forum would have subject matter jurisdiction, personal jurisdiction, and proper venue. See Hoffman v. Blaski , 363 U.S. 335, 343–44, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960).

If the Court is satisfied that the action could have been initially brought in the transferee forum, the Court considers eight non-exclusive private- and public-interest factors to determine if transfer is warranted for convenience. In re Volkswagen AG , 371 F.3d 201, 202–03 (5th Cir. 2004) [ Volkswagen I ]; In re Volkswagen of Am., Inc. , 545 F.3d 304, 315 (5th Cir. 2008) (en banc) [ Volkswagen II ]. The private interest factors are "(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive." Volkswagen II , 545 F.3d at 315 (quoting Volkswagen I , 371 F.3d at 203 ). The public interest factors are "(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws [or in] the application of foreign law." Id. (quoting Volkswagen I , 371 F.3d at 203 ) (alterations in original). The movant must "clearly demonstrate" that transferee forum would be "clearly more convenient" than the transferor forum in view of the eight forum non conveniens factors. Id. at 314–15.

III. DISCUSSION

The Court first addresses DSC's Motion to Dismiss and concludes, for the reasons stated herein, that it should be DENIED . The Court next reaches DSC's Motion to Transfer and concludes, as discussed herein, that it should also be DENIED .

A. Motion to Dismiss

1. Subject-Matter Jurisdiction

DSC first moves to dismiss this action arguing that Seagen filed its complaint before the ’039 patent issued. If DSC is correct and Seagen's complaint is premature, the Court must dismiss Seagen's complaint for lack of subject-matter jurisdiction. However, the Court concludes otherwise and finds that it has subject-matter jurisdiction over Seagen's timely filed complaint.

On its face, the ’039 patent issued from the U.S. Patent and Trademark Office (the "PTO") on October 20, 2020. Seagen filed its complaint at 12:02 a.m. Eastern Time on October 20, 2020, which is 11:02 p.m. Central Time on October 19, 2020. This Court is located in the Central Time zone. DSC argues that Seagen's complaint was filed in the Eastern District of Texas before the effective issue date. Seagen does not dispute the timing of this, but contends the patent had issued and the right to exclude accrued at the start of October 20, 2020 in the Eastern Time zone.

DSC relies on the Uniform Time Act ("UTA"), 15 U.S.C. §§ 260 – 267, which is the enabling statute for time zones. It argues that the UTA mandates that the applicable time zone for filing suit in East Texas is the Central Time zone. Thus, DSC argues, Seagen did not have the right to assert its patent in the Eastern District of Texas until the start of October 20, 2020 in the Central Time zone. (Dkt. No. 22 at 7–11).

The UTA provides:

Within the respective zones created under the authority of sections 261 to 264 of this title the standard time of the zone shall insofar as practicable (as determined by the Secretary of Transportation) govern the movement of all common carriers engaged in interstate or foreign commerce. In all statutes, orders, rules, and regulations relating to the time of performance of any act by any officer or department of the United States, whether in the legislative, executive, or

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