Richards Layton & Finger
 

Intellectual Property - Transfer

March 25, 2010

Judge Farnan Denies Defendant’s Motion to Transfer ANDA Action
In Pfizer Inc., et al. v. Sandoz, Inc., C.A. No. 09-742-JJF (D. Del. Jan. 20, 2010), Judge Farnan denied defendant’s motion to transfer and reserved decision on plaintiffs’ motion to enjoin defendant from proceeding with a later-filed action.  A day after filing the Delaware action, plaintiffs filed an identical action against defendant in the District Court for the District of Colorado.  Defendant raised counterclaims of invalidity and noninfringement in its answer in that action, and later filed a declaratory judgment action in that same court seeking declarations of invalidity and noninfringement.

The Court held that defendant failed to show that the Jumara public and private interest factors strongly weighed in favor of transferring the action to Colorado.  Defendant argued that plaintiffs’ choice of forum was not entitled to paramount consideration because they filed the identical Colorado action.  Judge Farnan noted that Hatch-Waxman gives a patent holder 45 days to bring suit after being notified of an ANDA filing, but does not address whether the patent holder can refile a suit dismissed for lack of jurisdiction after the 45-day window.  Accordingly, plaintiffs filed the identical Colorado action to protect their right to bring suit should the action in Delaware, their preferred forum, be dismissed.  Judge Farnan noted other cases in which the filing of such a “protective” suit was not regarded as bad faith or forum shopping.  Defendant, citing Pfizer v. Apotex, Inc., 2009 WL 2843288 (D. Del. Aug. 13, 2009), argued that plaintiffs should not be allowed to file identical actions and then choose which one to pursue.  Because defendant did not show that any of the other private or public interest factors strongly weighed in favor of transfer, Judge Farnan declined to decide whether plaintiffs’ choice of forum was entitled to deference in these circumstances.  Judge Farnan found that the remainder of the private interest factors were neutral and the public interest factors did not weigh strongly in favor of transfer.  Judge Farnan reserved decision on plaintiffs’ motion to enjoin the Colorado declaratory judgment action because it only applied to defendant’s declaratory judgment action and motions to stay or transfer both Colorado actions were pending. 

Judge Farnan Denies Defendant’s Motion to Transfer
In Stored Value Solutions Inc. v. Card Activation Technologies Inc., C.A. 09-495-JJF (D. Del. Nov. 20, 2009), Judge Farnan denied defendant’s motion to transfer.  Judge Farnan found that the case could have been filed in the Northern District of Illinois, but was filed in Delaware because both plaintiff and defendant were incorporated in and residents of the State of Delaware.  Defendant argued that it would be more efficient for the Northern District of Illinois, where defendant had filed related infringement suits against plaintiff’s customers, to hear the case.  Judge Farnan explained that efficiency is only gained when a single judge hears a case, not a single court.  Because multiple judges were hearing the cases in the Northern District of Illinois, it would be no more efficient to transfer the case than for the case to be heard in Delaware.
 

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