Teva Pharmaceuticals USA, Inc. et al v. Mylan Pharmaceuticals Inc. et al

Filing 52

MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS MOTION TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE 25 . Signed by District Judge Irene M. Keeley on 3/10/17. (jss) [Transferred from West Virginia Northern on 3/10/2017.]

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF WEST VIRGINIA
TEVA PHARMACEUTICALS USA, INC.;
TEVA PHARMACEUTICAL INDUSTRIES, LTD.;
and TEVA NEUROSCIENCE, INC.,
Plaintiffs,
v.

//

CIVIL ACTION NO. 1:17CV7
(Judge Keeley)

MYLAN PHARMACEUTICALS, INC.;
MYLAN, INC.; and NATCO PHARMA LTD.,
Defendants.
MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
On January 17, 2017, the plaintiffs, Teva Pharmaceuticals USA,
Inc. (“Teva USA”); Teva Pharmaceutical Industries, Ltd. (“Teva
Ltd.”); and Teva Neuroscience, Inc. (collectively, “Teva”), filed
this

action

for

patent

infringement

and

declaratory

judgment

against the defendants, Mylan Pharmaceuticals, Inc.; Mylan Inc.
(collectively, “Mylan”); and Natco Pharma Ltd. (“Natco”) (Dkt. No.
1). Teva then asked the Court to set a schedule for briefing and
hearing its motion for a preliminary injunction (Dkt. No. 20), but
shortly thereafter, the defendants filed a motion to transfer venue
to the District of Delaware (Dkt. No. 25).
At a status conference held on February 16, 2017, the parties
agreed that the Court should set an expedited briefing schedule and
decide the defendants’ motion to transfer before taking up Teva’s
motion for a preliminary injunction (Dkt. No. 37). After full
briefing, the Court heard argument on the motion to transfer venue
on March 6, 2017 (Dkt. Nos. 44; 49; 51). For the reasons that

TEVA PHARMACEUTICALS v. MYLAN PHARMACEUTICALS

1:17CV7

MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
follow, the Court GRANTS the motion and TRANSFERS this case to the
District of Delaware (Dkt. No. 25).
I. BACKGROUND
A.

The Complaint
In

its

complaint,

Teva

alleges

that

the

defendants

are

attempting to market, manufacture, and sell a generic version of
Teva’s COPAXONE® injection prior to the expiration of U.S. Patent
No. 9,155,775 (“the ‘775 patent”), which Teva claims is infringed
or will be infringed by the defendants’ actions (Dkt. No. 1 at 1).
The United States Patent and Trademark Office issued the ‘775
patent to Teva Ltd. on October 13, 2015 (Dkt. No. 1-1 at 2), and it
is not set to expire until January 28, 2035 (Dkt. No. 1 at 10).
Teva Ltd. is the sole owner of the patent and has granted Teva USA
an exclusive license “to use, offer to sell, sell and import the
COPAXONE 40 mg/ml product.” Id. Teva USA holds the approved New
Drug Application (“NDA”) for the COPAXONE® product at issue: a 1 ml
prefilled syringe, containing 40 mg/ml glatiramer acetate, to be
administered three times per week for the treatment of patients
with relapsing forms of multiple sclerosis (“the product”). Id.
Glatiramer acetate is a complex mixture of polypeptide chains, and
according to Teva, the invention claimed in the ‘775 patent
reflects the discovery that “filtering pharmaceutical preparations
of glatiramer acetate at temperatures” of above 0 degrees to 17.5
2

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
degrees Celsius improves the filtration process and facilitates
commercial production. Id. at 11.
Mylan filed an Abbreviated New Drug Application (“ANDA”)
seeking FDA approval to market a generic version of the product. As
with all such drugs, the generic product “must be equivalent to the
innovator drug” and have an active ingredient that is the same as
that in the innovator drug. Id. at 12. According to Teva, the
product is too complex to be fully characterized and its “method of
action . . . has not been fully elucidated.” It is “a safe and
effective treatment,” but Teva is uncertain what attributes of the
product accomplish this purpose. It does, however, believe that the
method

of

manufacturing

plays

a

role

in

“the

action

and

effectiveness” of the product. Teva claims that, by presumably
manufacturing commercial batches of the product in a manner that
meets the requirements for FDA approval, Mylan necessarily must be
infringing the ‘775 patent. Id. It contends that the processes of
the ‘775 patent “are the only commercially feasible means of
producing commercial scale quantities” of the product. Id. at 13.
B.

Related Proceedings
This action is among the most recent in a litany of cases

involving the alleged infringement or noninfringement of patents
covering COPAXONE®. After Mylan filed its ANDA, Teva filed suit
against Mylan and Natco in the District of Delaware on October 6,
3

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
2014, under 35 U.S.C. § 271(e)(2)(A) (D. Del., Civ. Action No.
1:14cv1278, Dkt. No. 1).1 The District of Delaware consolidated the
action with similar suits filed by Teva against eight other
entities.2
alleged

Ultimately,

the

in

infringement

its
of

second
four

amended

complaint,

method-of-treatment

Teva

patents

covering the product (D. Del., Civ. Action No. 1:14cv1171 (“Teva
I”), Dkt. No. 115). After a seven-day bench trial in September
2016, on January 30, 2017, the Honorable Gregory M. Sleet, United
States District Judge, concluded that all of the asserted claims of
the patents-in-suit are invalid as obvious (Teva I, Dkt. No. 294).
While the parties were awaiting Judge Sleet’s final decision
in Teva I, on December 19, 2016, Teva filed another suit in the
District

of

Delaware,

alleging

infringement

of

an

additional

method-of-treatment patent covering the product, U.S. Patent No.
9,402,874 (“the ‘874 patent”) (D. Del., Civ. Action No. 1:16cv1267
(“Teva II”), Dkt. No. 1). Mylan filed its answer in Teva II on
February 8, 2017, and counterclaimed on the ‘775 patent, which was
already the subject of this suit (Teva II, Dkt. No. 14 at 30).

1

Teva also filed a protective suit in this Court, which
remains stayed pending the outcome in the District of Delaware
(Civ. Action No. 1:14cv167, Dkt. Nos. 1; 53; 63).
2

Sandoz, Inc.; Momenta Pharmaceuticals, Inc.; Dr. Reddy’s
Laboratories, Inc.; Synthon Pharmaceuticals Inc.; Synthon B.V.;
Synthon s.r.o. Blankso; Amneal Pharmaceuticals LLC; and Amneal
Pharmaceuticals Co. GmbH.
4

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Before Judge Sleet issued his decision on the method-oftreatment patents in Teva I, Teva filed the instant suit as well as
four similar suits concerning the ‘775 patent against other ANDA
filers that are parties to Teva I and Teva II.3 One group of ANDA
filers, Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals Co.
GmbH, filed a declaratory action concerning the ‘775 patent in the
District of Delaware before Teva filed its suit on the ‘775 patent
against them in the Eastern District of New York (D. Del., Civ.
Action No. 1:17cv74, Dkt. No. 1). Likewise, on February 2, 2017,
after being voluntarily dismissed by Teva from its ‘775 suit in the
District of New Jersey, Momenta Pharmaceuticals, Inc., filed a
declaratory action concerning the ‘775 patent in the District of
Delaware (D. Del., Civ. Action No. 1:17cv109, Dkt. No. 1).
II. DISCUSSION
Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties
and

witnesses,

in

the

interest

3

of

justice,”

the

Court

has

On January 13, 2017, Teva filed suit against Momenta
Pharmaceuticals, Inc., and Sandoz Inc. in the District of New
Jersey (D.N.J., Civ. Action No. 3:17cv275, Dkt. No. 1). Teva
voluntarily dismissed Momenta Pharmaceuticals, Inc., on January 31,
2017. On January 17, 2017, Teva filed suit against Synthon
Pharmaceuticals, Inc., Synthon B.V., and Synthon s.r.o. in the
Southern District of New York (S.D.N.Y., Civ. Action No. 1:17cv245,
Dkt. No. 1). On January 25, 2017, Teva filed suit against Dr.
Reddy’s Laboratories, Inc., and Dr. Reddy’s Laboratories, Ltd., in
the District of New Jersey (D.N.J., Civ. Action No. 3:17cv517, Dkt.
No. 1). On January 25, 2017, Teva also filed suit against Amneal
Pharmaceuticals LLC and Amneal Pharmaceuticals Co. GmbH in the
Eastern District of New York (E.D.N.Y., Civ. Action No. 2:17cv416).
5

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
discretion to transfer a civil action to a district “where it might
have been brought.” “The movant typically bears the burden of
demonstrating that transfer is proper,” and “[t]he decision to
transfer venue is left to the sound discretion of the trial court.”
In re Campbell Transp. Co., Inc., 368 F. Supp. 2d 553, 556 (N.D.W.
Va. 2005) (citing Verosol B.V. v. Hunter Douglas, Inc., 806 F.
Supp. 582, 592 (E.D. Va. 1992)). In this patent case, convenience
and justice under § 1404(a) are governed by Fourth Circuit case
law, but jurisdictional determinations are governed by the law of
the Federal Circuit. Global Touch Solutions, LLC v. Toshiba Corp.,
109 F. Supp. 3d 882, 890 (E.D. Va. 2015) (citing Avocent Huntsville
Corp. v. Aten Int’l Co., Ltd., 552 F.3d 1324, 1328 (Fed. Cir.
2008)).
For the reasons that follow, the Court concludes that this
case might have been brought in the District of Delaware, and
despite

the

weight

accorded

to

Teva’s

choice

of

forum,

the

defendants have established that it is in the interest of justice
to transfer the case to the District of Delaware.
A.

Jurisdiction in the District of Delaware
The

threshold

question

is

whether

the

defendants

have

established that Teva might have brought this suit in the District
of Delaware. 28 U.S.C. § 1404(a). Such a showing, of course,
requires that the District of Delaware would have had subject
6

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
matter

and

personal

jurisdiction

over

the

parties.

Both

requirements are satisfied here.
First, Teva has alleged subject matter jurisdiction pursuant
to 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202 (Dkt. No. 1 at 2-3),
which obtains with equal force in the District of Delaware. Second,
the parties do not appear to dispute that Mylan Pharmaceuticals and
Mylan Inc. are subject to personal jurisdiction in the District of
Delaware pursuant to Rule 4(k)(1)(A) (Dkt. Nos. 25-1 at 11; 44 at
11-12). See Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc.,
817 F.3d 755 (Fed. Cir. 2016) (ruling that Mylan Pharmaceuticals
was subject to specific personal jurisdiction in the District of
Delaware based on an ANDA filing), cert. denied, 2017 WL 69716
(U.S. Jan. 9, 2017).4 In addition, the District of Delaware would
have had personal jurisdiction over Natco.
Natco is an Indian company with its principal place of
business

in

India,

and

it

works

in

concert

with

Mylan

Pharmaceuticals and Mylan Inc. (Dkt. Nos. 1 at 2, 7-9; 25-1 at 11).
In

its

complaint,

Teva

alleged

4

that

the

Court

has

personal

As Teva points out, whether Mylan presently consents to suit
in the District of Delaware is largely inapposite to whether Teva
could have brought the suit there in the first place (Dkt. No. 44
at 12). Kontoulas v. A.H. Robins Co, Inc., 745 F.2d 312, 315 (4th
Cir. 1984) (“[E]ven consent to jurisdiction by a party cannot
convert a federal district into one in which a suit ‘might have
been brought’ under § 1404, if venue and jurisdiction requirements
were not met at the time the suit was first filed.” (citing Hoffman
v. Blaski, 363 U.S. 335, 342-43 (1960))).
7

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
jurisdiction over Natco pursuant to Fed. R. Civ. P. 4(k)(2) (Dkt.
No. 1 at 9).5
Rule 4(k)(2) provides that, “[f]or a claim that arises under
federal law, serving a summons or filing a waiver of service
establishes personal jurisdiction over a defendant if: (A) the
defendant is not subject to jurisdiction in any state’s courts of
general jurisdiction; and (B) exercising jurisdiction is consistent
with the United States Constitution and laws.” In other words, the
rule “allow[s] a court to exercise personal jurisdiction over a
defendant if (1) the plaintiff's claim arises under federal law,
(2) the defendant is not subject to jurisdiction in any state's
courts

of

general

jurisdiction,

and

(3)

the

exercise

of

jurisdiction comports with due process.” Synthes (U.S.A.) v. G.M.
Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285, 1293-94
(Fed. Cir. 2009).
Here, federal patent law creates the causes of action in
Teva’s complaint, and the claims thus arise under federal law as
required by the first element. Touchcom, Inc. v. Bereskin & Parr,
574 F.3d 1403, 1413 (Fed. Cir. 2009) (citing Christianson v. Colt
Indus. Operating Corp., 486 U.S. 800, 809 (1988)). In addition,

5

For the sake of Teva’s argument, and because the District of
Delaware has rejected other bases for personal jurisdiction over
Natco (Dkt. No. 46-10 at 3), the Court assumes that Teva would have
been forced to rely on its alternative assertion of jurisdiction
under Rule 4(k)(2).
8

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
because of Natco’s extensive contacts with the United States, the
Court has no doubt that exercising personal jurisdiction over Natco
under Rule 4(k)(2) comports with due process as required by the
third element. See Synthes, 563 F.3d 1285 (finding that Rule
4(k)(2) personal jurisdiction over a Brazilian company comported
with due process).
The remaining element in dispute, therefore, is whether Natco
would have been “subject to jurisdiction in any state’s courts of
general jurisdiction” at the time Teva filed this suit. In order to
decide the issue, the Court need not determine whether Natco is
subject to personal jurisdiction in West Virginia or any other
state. Rather, under Federal Circuit precedent, an allegation of
jurisdiction under Rule 4(k)(2) places the burden on the foreign
defendant to demonstrate that it is not

subject to personal

jurisdiction. In Touchcom, Inc., the Federal Circuit explained that
“the purposes of Rule 4(k)(2) are best achieved when the defendant
is afforded the opportunity to avoid the application of the rule
only when it designates a suitable forum in which the plaintiff
could have brought suit.” Touchcom, Inc., 574 F.3d at 1415. A court
may thus exercise jurisdiction under Rule 4(k)(2) if a foreign

9

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
“defendant contends that he cannot be sued in the forum state and
refuses to identify any other where suit is possible.” Id.6
Teva argues that, because Natco successfully defeated personal
jurisdiction in Teva I, the District of Delaware could not have
exercised personal jurisdiction over Natco in this case (Dkt. No.
44 at 8, 11-12). In Teva I, Teva alleged personal jurisdiction over
Natco in the District of Delaware on the basis of Rule 4(k)(2)
(Teva I, Dkt. No. 1 at 9). Natco sought dismissal, arguing that the
District of Delaware could not exercise personal jurisdiction over
it

under

Rule

4(k)(2).

Instead,

it

claimed

that

“[s]pecific

personal jurisdiction over Natco on the claims asserted here exists
in the court where Teva has filed an identical lawsuit - the
Northern District of West Virginia” (Teva I, Dkt. No. 35 at 7)
(emphasis added). The District of Delaware ultimately dismissed
Natco because, pursuant to Touchcom, Inc., it had “designate[d] a

6

Natco seems to argue that it may escape the grasp of Rule
4(k)(2) in this Court by selecting Delaware as an alternative forum
(Dkt. No. 49 at 6-7). Under the threshold analysis of a motion to
transfer, however, that argument puts the cart before the horse.
Natco did not file a motion to dismiss for lack of personal
jurisdiction, in which case it would have been seeking to avoid
application of Rule 4(k)(2), and the Court would have been “welcome
to transfer the case as it [saw] fit.” Touchcom, Inc., 574 F.3d at
1416. It filed only a motion to transfer, and seeks to take
advantage of Rule 4(k)(2) in the District of Delaware. The proper
inquiry is whether Teva could have filed this case in the District
of Delaware, not whether Natco can now identify Delaware as a
suitable alternative forum.
10

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
suitable” alternative “forum in which the plaintiff could have
brought suit” (Teva I, Dkt. No. 37 at 2).
Contrary to Teva’s argument, Natco’s position in Teva I does
not preclude it from being subject to personal jurisdiction in
Delaware in other suits (Dkt. No. 49 at 6-7). In the instant
complaint, Teva identified Rule 4(k)(2) as a basis for personal
jurisdiction over Natco, a foreign defendant. Because of that
allegation, Teva could have filed the suit against Natco in any
federal district court, including the District of Delaware. The
District of Delaware would only have been divested of jurisdiction
under Rule 4(k)(2) if Natco again affirmatively named another forum
where it would be subject to suit. See Touchcom, Inc., 574 F.3d at
1415. That Natco has conceded specific personal jurisdiction in
West Virginia in a prior related action does not mean that it would
have done so here. The Court thus concludes that the District of
Delaware could have exercised personal jurisdiction over Natco had
this case been filed there.7

7

The Court recognizes that this conclusion effectively allows
Natco to select opposite fora in related cases. However, that
result is dictated by binding precedent governing application of
Rule 4(k)(2). Touchcom, Inc., 574 F.3d at 1415.
Moreover, the
somewhat absurd result here is limited in scope by the fact that,
regardless of whether Teva theoretically could have filed this suit
in any district, Natco in practice can seek transfer only to
districts that meet the factor test for transfer under § 1404(a).
See Plumbing Servs., 791 F.3d at 444.
11

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Therefore,

because

the

District

of

Delaware

could

have

exercised both subject matter and personal jurisdiction over each
of the defendants, this action “might have been brought” in the
District of Delaware. See

28 U.S.C. § 1404(a). In addition,

although their consent has no bearing on whether the suit might
have been brought in the District of Delaware to begin with, the
defendants

represent

that

they

will

not

contest

personal

jurisdiction once the case is transferred (Dkt. No. 25-1 at 11)
(“Mylan and Natco will consent to personal jurisdiction in Delaware
solely for the purposes of this case.”).
B.

Discretionary Factors
Under 28 U.S.C. § 1404(a), if an action might have been

brought elsewhere, a district court’s discretion to transfer venue
lies in “the convenience of parties and witnesses” and “the
interest of justice.” The Court should “consider four factors when
deciding whether to transfer venue: (1) the weight accorded to
plaintiff's choice of venue; (2) witness convenience and access;
(3) convenience of the parties; and (4) the interest of justice.”8
Trustees of the Plumbers and Pipefitters Nat’l Pension Fund v.
8

Other discretionary factors that this district has
previously considered are “(1) ease of access to sources of proof;
(2) the convenience of parties and witnesses; (3) the cost of
obtaining the attendance of witnesses; (4) the availability of
compulsory process; (5) the possibility of a view; (6) the interest
in having local controversies decided at home; and (7) the
interests of justice.” In re Campbell, 368 F. Supp. 2d at 555-56.
12

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Plumbing Servs., 791 F.3d 436, 444 (4th Cir. 2015). The interest of
justice outweighs all other considerations in this case, and
transfer to the District of Delaware is warranted.
1.

Plaintiff’s Choice of Venue

“[A] plaintiff may ordinarily select his forum unless there
are factors of convenience sufficiently important to the parties
and the court to occasion denying him that choice.” Carter v. Nat’l
City Mortg., Inc., No. 1:14cv70, 2014 WL 2862953, at *3 (N.D.W. Va.
June 24, 2014) (quoting Ellicott Mach. Corp. v. Modern Welding Co.,
502 F.2d 178, 180 (4th Cir. 1974)). Indeed, “unless the balance is
strongly in favor of the defendant, the plaintiffs' choice of forum
should rarely be disturbed.” Id. (quoting Morehead v. Barksdale,
263 F.2d 117, 119 (4th Cir. 1959)); see also Gulf Oil Corp. v.
Gilbert, 330 U.S. 501, 508 (1947). This is especially true when the
plaintiff has selected its home forum or the nucleus of operative
facts. See Samsung Elecs. Co., Ltd. v. Rambus, Inc., 386 F. Supp.
2d 708, 716 (E.D. Va. 2005).
This is not to say that the plaintiff’s choice of forum is
always

subject

to

such

heightened

deference.

“[W]here

the

plaintiff’s choice of forum is a place where neither the plaintiff
nor the defendant resides and where few or none of the events
giving rise to the cause of action accrued,” that choice weighs
less in the Court’s consideration. Klay v. AXA Equitable Life Ins.
13

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TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Co., No. 5:08cv118, 2009 WL 36759, at *3 (N.D.W. Va. Jan. 6, 2009)
(quoting Ion Beam Applications, S.A. v. Titan Corp., 156 F. Supp.
2d 552, 563 (E.D. Va. 2000)). “[W]hen a plaintiff chooses a forum
other than its home it is often more difficult for the plaintiff to
show why such a forum is more convenient for the plaintiff.” Global
Touch, 109 F. Supp. 3d at 896 (internal quotation omitted). “The
weight is also lessened ‘whe[n] a plaintiff files a preemptive
declaratory judgment action in order to deprive the ‘natural
plaintiff’—the one who wishes to present a grievance for resolution
by the court—of its choice of forum.’” D2L Ltd. v. Blackboard,
Inc., 671 F. Supp. 2d 768, 779 (D. Md. 2009) (quoting Piedmont
Hawthorne Aviation, Inc. v. TriTech Envtl. Health & Safety, Inc.,
402 F. Supp. 2d 609, 616 (M.D.N.C. 2005)).
The defendants argue that the Court should afford Teva’s
choice of forum little weight because it has elected to sue outside
its home forum of Delaware (Dkt. No. 25-1 at 12). Moreover, they
allege that, given the number of suits and fora recently pursued by
Teva, it is clearly engaged in “gamesmanship” and “forum shopping,”
seeking “to get a quick injunction from a court unfamiliar with the
parties, facts, and product at issue, and then leverage that
injunction in other courts in an effort to delay the creation of a
generic market” (Dkt. Nos. 25-1 at 12-13; 49 at 13). Teva maintains
that

its

choice

is

entitled

14

to

deference

because

Mylan

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TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Pharmaceuticals is headquartered in West Virginia, Natco supplies
ingredients to Mylan in West Virginia, and alleged infringing
manufacturing and sale either has occurred or will occur in West
Virginia (Dkt. No. 44 at 13-14).
The Court is not convinced by the defendants’ argument that
Teva’s choice of forum should be afforded less weight because it is
not “at home” in West Virginia. Although it is true that Teva is
not

incorporated

or

headquartered

here,

other

relevant

facts

provide a sufficient basis for affording Teva’s forum selection the
usual degree of deference.
First, Mylan Pharmaceuticals is incorporated in West Virginia
with its principal place of business in Morgantown, and Mylan Inc.
is

incorporated

business

nearby

in

Pennsylvania

in

Canonsburg

with

its

principal

(Dkt.

No.

46-3

at

place
3).

of

Mylan

Pharmaceuticals compiled the ANDA related to its generic product in
West Virginia. Id. Although Natco is a foreign company, Teva
previously has attempted to sue Natco in Delaware, and Natco
avoided being subjected to personal jurisdiction under Rule 4(k)(2)
by identifying West Virginia as a suitable forum (Dkt. No. 46-10).
In addition, and more importantly, it is clear that Teva
elected to file suit where the “nucleus of operative facts” took
place. Samsung, 386 F. Supp. 2d at 716. In its complaint, Teva
alleges chiefly that the defendants’ production of the generic

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TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
product infringes the method of manufacturing claimed in the ‘775
patent (Dkt. No. 1 at 12-13). Mylan does not dispute that it
operates

a

major

manufacturing

facility

in

Morgantown,

West

Virginia, and also operates its “global R&D center of excellence”
there (Dkt. No. 44 at 4). Indeed, the defendants acknowledge “that
Mylan has a significant corporate presence in West Virginia” (Dkt.
No. 49 at 13). The defendants likewise do not dispute that Mylan
Pharmaceuticals makes marketing decisions in West Virginia (Dkt.
No. 46-3 at 3).
Therefore, Teva’s decision to sue these defendants in West
Virginia is perfectly reasonable, despite the fact that it is not
at home here. The defendants’ home fora and prior actions, as well
as the facts giving rise to this case, provide sufficient support
for Teva’s choice. That choice is entitled to great weight in the
Court’s analysis of whether discretionary transfer is appropriate.
2.

Witness Access and Party Convenience

The second and third factors require the Court to consider
“witness convenience and access,” as well as “the convenience of
the parties.” Plumbing Servs., 792 F.3d at 444. In addition to
convenience, the ease of accessing witnesses may depend upon “the
cost

of

obtaining

the

attendance

of

witnesses

[and]

the

availability of compulsory process.” See In re Campbell, 368 F.

16

TEVA PHARMACEUTICALS v. MYLAN PHARMACEUTICALS

1:17CV7

MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Supp. 2d at 555-56. These considerations lend little support to the
defendants’ motion.
The defendants assert only that Teva cannot claim that the
District of Delaware would be a less convenient forum, as the
parties have comfortably litigated there in the past (Dkt. No. 25-1
at 12-13). In fact, they

concede that “[t]he convenience of the

witnesses and parties is neutral” (Dkt. No. 49 at 12). As Teva
points out, the Mylan defendants are centrally located in West
Virginia and cannot realistically argue that litigating here would
be inconvenient for them (Dkt. No. 44 at 20-21). The defendants
simply have not carried their burden to demonstrate that the
District of Delaware would be a more convenient forum. In re
Campbell, 368 F. Supp. 2d at 556.
3.

The Interest of Justice

Because

witness

and

party

convenience

are

neutral

considerations, the dispositive question is whether the interest of
justice weighs so heavily in favor of transfer that it overcomes
the strong presumption that Teva is entitled to select its forum.
See Plumbing Servs., 792 F.3d at 444. The “interest of justice”
factor “encompass[es] all those factors bearing on transfer that
are unrelated to convenience of witnesses or parties.” D2L Ltd.,
671 F. Supp. 2d at 783-84 (quoting Howard Univ. v. Watkins, 2007 WL
763182, at *5 (D. Md. Mar. 12, 2003)); see also Samsung, 386 F.
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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
Supp. 2d at 716 (“[T]he interest of justice may be decisive in
ruling on a transfer motion even though the convenience of the
parties and witnesses point in a different direction.”). In light
of the fact that the District of Delaware is familiar with this
litigation, and that there are claims pending there challenging the
‘775 patent and there exists the possibility for consolidation, the
Court concludes that the interest of justice outweighs Teva’s
choice of forum.
First, in Teva I, the District of Delaware recently ruled that
four

method-of-treatment

patents

covering

Teva’s

product

are

invalid as obvious (Teva I, Dkt. No. 294). In the process, it
considered evidence of the commercial success of Teva’s product and
garnered an understanding of why it has succeeded in the market.
Id. at 48. This case involves a method-of-manufacturing patent
rather than a method-of-treatment patent, and as Teva argues, it
will undoubtedly involve different issues (Dkt. No. 44 at 6-8).9
Nonetheless, after extensive litigation, the District of Delaware
is familiar with the parties as well as the products at issue in
this case. In order to rule on Teva’s motion for a preliminary
injunction, the presiding court will be required to consider
whether

the

defendants’

activities

9

create

“a

likelihood

of

It is nonetheless possible, as the defendants argue, that
Teva might assert commercial success as a secondary indicia of nonobviousness in this case as well.
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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
substantial and immediate irreparable injury.” Apple, Inc. v.
Samsung Elecs. Co., 678 F.3d 1314, 1325 (Fed. Cir. 2012). Such an
analysis of future economic harm will involve similar evidence as
the District of Delaware considered in connection with the past
commercial success of Teva’s product.
Second, the ‘775 patent is currently at issue in a related
action between the same parties in the District of Delaware. As
discussed earlier, on December 19, 2016, Teva filed suit on the
‘874 method-of-treatment patent in the District of Delaware (Teva
II, Dkt. No. 1). After Teva filed the instant suit on the ‘775
patent, Mylan filed counterclaims on the ‘775 patent in Teva II
(Teva II, Dkt. No. 14 at 30). In addition, other generic producers
- Amneal Pharmaceuticals LLC, Amneal Pharmaceuticals Co. GmbH, and
Momenta Pharmaceuticals, Inc. - have filed declaratory actions
there on the ‘775 patent.10

10

Teva argues that Mylan’s counterclaims, although involved
in a case that Teva filed a month before this case, are “secondfiled” to Teva’s claims in the instant suit. Whether they are or
not, when considered with the other actions on the ‘755 patent
pending there, the counterclaims represent an opportunity for the
District of Delaware to act as a central location for the
litigation of infringement claims arising out of the manufacture
and sale of Mylan’s generic products. See Samsung, 386 F. Supp. 2d
at 724 (explaining that the first-to-file “rule’s primary purpose
is to avoid burdening the federal judiciary and to prevent the
judicial embarrassment of conflicting judgments. Yet, fundamental
fairness dictates the need for fashioning a flexible response to
the issue of concurrent jurisdiction.” (quoting E.E.O.C. v. Univ.
of Pennsylvania, 859 F.2d 969, 977 (3d Cir. 1988))).
19

TEVA PHARMACEUTICALS v. MYLAN PHARMACEUTICALS

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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
“The interest of justice weighs heavily in favor of transfer
when a related action is pending in the transferee forum” because
transfer

“facilitate[s]

efficient

pretrial

proceedings

and

discovery” and “avoids inconsistent results.”11 D2L Ltd., 671 F.
Supp. 2d at 783-84 (citing U.S. Ship Mgmt., Inc. v. Maersk Line,
Ltd., 357 F. Supp. 2d 924, 938 (E.D. Va. 2005)). It is difficult to
imagine a more “extravagantly wasteful and useless duplication of
time and effort” than for multiple suits involving the same product
and the ‘775 patent, instituted within only the past several
months, to proceed in different districts. See Gen. Tire & Rubber
Co. v. Watkins, 373 F.2d 361, 362 (4th Cir. 1967). Adjudicating
these cases together in the District of Delaware will help avoid
the

risk

that

inconsistent

results

are

reached

on

the

same

questions of fact and law. See D2L Ltd., 671 F. Supp. 2d at 783-84.
Therefore, because transfer will conserve scarce judicial resources
and

avoid

the

risk

of

inconsistent

results

in

duplicative

litigation, the interest of justice outweighs Teva’s choice of
forum in this case.

11

As Teva points out, 35 U.S.C. § 299(a) precludes the
District of Delaware from “consolidat[ing] for trial” § 271(e)(2)
actions such as Teva II (Dkt. No. 44 at 19). Nonetheless, the
district court would be free to consolidate discovery and pretrial
proceedings in those cases, which would help conserve scarce
judicial resources, and there exists the possibility that the
various “accused infringer[s]” will waive the prohibition on
joinder under 35 U.S.C. § 299(c).
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MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’ MOTION
TO TRANSFER VENUE TO THE DISTRICT OF DELAWARE [DKT. NO. 25]
III. CONCLUSION
For the reasons discussed, the Court GRANTS the defendants’
motion to transfer venue to the District of Delaware (Dkt. No. 25).
Pursuant to 28 U.S.C. § 1404(a), the Court TRANSFERS this case to
the District of Delaware.
It is so ORDERED.
The Court directs the Clerk to transmit copies of this Order
to counsel of record.
DATED: March 10, 2017.
/s/ Irene M. Keeley
IRENE M. KEELEY
UNITED STATES DISTRICT JUDGE

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