Genentech, Inc. et al v. Sanofi-Aventis Deutschland GMBH et al

Filing 72

ORDER DENYING DEFENDANTS' MOTION FOR STAY OF DISCOVERY, REFERRING DISCOVERY DISPUTE TO MAGISTRATE JUDGE (SI, COURT STAFF) (Filed on 2/10/2009)

1 2 3 4 5 6 7 8 9 10 United United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 v. SANOFI-AVENTIS DEUTSCHLAND GMBH, et al., Defendants. / GENENTECH, INC. et al., Plaintiff, No. C 08-4909 SI ORDER DENYING DEFENDANTS' MOTION FOR STAY OF DISCOVERY, REFERRING DISCOVERY DISPUTE TO MAGISTRATE JUDGE IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

Plaintiffs' motion for leave to conduct limited discovery is scheduled for a hearing on February 13, 2009. Pursuant to Civil Local Rule 7-1(b), the Court determines that the matter is appropriate for resolution without oral argument, and VACATES the hearing. The Court has also reviewed the parties' letter briefs1 regarding defendants' request to stay discovery pending a decision by the Texas court on whether it will retain jurisdiction over the related case. As set forth below, the Court DENIES defendants' motion to stay discovery, and REFERS the pending discovery dispute to a magistrate judge for determination in the first instance.

BACKGROUND On October 27, 2008, Sanofi-Aventis Deutschland GmbH ("Sanofi-Aventis Germany") filed suit in the Eastern District of Texas against Genentech, Inc. and Biogen Idec Inc. for patent infringement and declaratory judgment. The Texas action alleges infringement of U.S. Patent Nos. 5,849,522 (the "522 Patent") and 6,218,140 (the "140 Patent"). Hours later that same day, Genentech and Biogen filed
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The parties' letter briefs are found at Docket Nos. 62 and 71.

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a complaint in this Court for declaratory judgment of non-infringement and invalidity of the same patents. Named defendants in this case are Sanofi-Aventis Germany, as well as Sanofi-Aventis U.S. LLC and Sanofi-Aventis U.S. Inc. (collectively, the "Sanofi-Aventis U.S. defendants"). In this case, Sanofi-Aventis Germany has moved to dismiss for lack of personal jurisdiction, while the Sanofi-Aventis U.S. defendants have moved to dismiss for lack of subject matter jurisdiction and for failure to state a claim. In response, plaintiffs have moved for leave to conduct limited jurisdictional discovery. Initially, defendants agreed that plaintiffs were entitled to some discovery, and the parties only disagreed on the scope of that discovery, prompting plaintiffs to file the instant motion for discovery. However, defendants now seek to stay discovery in this case until the Texas court rules on Genentech's motion to transfer the Texas case to the Northern District of California.

DISCUSSION Defendants move to stay discovery in this case pursuant to the first-to-file rule. Under this rule, a district court may transfer, stay, or dismiss an action when a similar action has been filed in another district court. Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622, 625-26 (9th Cir. 1991). When deciding whether to apply the first-to-file rule, the Court must look at three factors: (1) the chronology of the two actions; (2) the similarity of the parties; and (3) the similarity of the issues. Id. Here, the Sanofi-Aventis U.S. defendants are not parties to the Texas action, and thus even if the Texas court retains jurisdiction over that case, this Court will still have to adjudicate plaintiffs' claims against the Sanofi-Aventis U.S. defendants.2 The Court is reluctant to delay proceedings in this case, particularly when defendants' motions to dismiss are pending and cannot be resolved without conducting some discovery. If the Texas court retains jurisdiction, the Court will address case management issues, including coordination of discovery, with the parties. With regard to defendants' pending motions to dismiss, the parties previously agreed that plaintiffs are entitled some discovery, but could not agree on the scope. The Court refers plaintiffs'

Without expressing any view on the merits of the transfer motion, the Court notes that as a result of the Federal Circuit's decision in In re TS Tech, ___ F.3d ___, 2008 WL 53975220 (Fed. Cir. Dec. 29, 2008), motions to transfer venue will likely be granted with greater frequency. 2

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motion for discovery (Docket No. 34) to a Magistrate Judge for determination in the first instance.

IT IS SO ORDERED.

Dated: February 10, 2009

SUSAN ILLSTON United States District Judge

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