Judge Sleet Denies Motion to Transfer Under Section 1404(A)

August 18, 2016

Publication| Intellectual Property

In Bristol-Myers Squibb Co. v. Merck & Co., C.A. No. 14-1131 (D. Del. July 13, 2016), Judge Sleet denied plaintiffs Bristol-Myers Squibb Co., E. R. Squibb & Sons, L.L.C., Ono Pharmaceutical Co., Ltd., and Tasuku Honjo’s (collectively, “Movants’”) motion to transfer to Delaware a nonjoinder of inventorship case pending in the District of Massachusetts. The Massachusetts litigation involved patents at issue in three infringement actions currently pending in the District of Delaware. Judge Sleet was asked to decide the unique issue when the judge overseeing the Massachusetts litigation had ordered Movants—defendants in the Massachusetts action, but plaintiffs in the Delaware actions—to ask the court in Delaware to resolve their motion to transfer because of the possibility of substantial overlap in the facts among the cases.

The plaintiff in the Massachusetts case, the Dana-Farber Cancer Institute, Inc., opposed transfer on the basis that the inventorship litigation could not initially have been brought in Delaware—as required by the change of venue statute—because personal jurisdiction would be lacking over two of the Movants. The Court agreed, concluding that Delaware’s long-arm statute did not reach the two Movants who were residents of Japan. Exercising specific personal jurisdiction over a nonresident under Delaware’s long-arm statute requires an in-state act by the defendant “that sets in motion a series of events which form the basis for the cause of action before the court.” Sears, Roebuck & Co. v. Sears plc, 752 F. Supp. 1223, 1227 (D. Del. 1990). Yet here, according to the Court, the events underlying the inventorship dispute occurred in Massachusetts, without any contact with Delaware.

The Movants argued that the filing of the infringement actions in Delaware constituted a “jurisdictional act” conferring personal jurisdiction over the Movants under Foster Wheeler Energy Corp. v. Metallgesellschaft AG, 1993 WL 669447 (D. Del. Jan. 4, 1993), since the Movants consented to jurisdiction by filing lawsuits in Delaware with a “logical relationship” to the inventorship litigation. But Judge Sleet pointed out that Foster Wheeler involved identical parties and the same claim, whereas here different parties were involved in the two sets of litigations. Nor did the Court find a “logical relationship” among the lawsuits, since the infringement suits did not arise from the inventorship dispute. Thus, Judge Sleet denied Movants’ motions to transfer.

Key Points: Although most transfer cases turn on the Third Circuit’s Jumara factors for evaluating convenience, the statutory requirement for change of venue—that the transferee forum must be one where the action might have been brought—may, if the facts permit, provide a stronger basis to oppose transfer.

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