Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd. et al

Filing 85

Judge Mark L. Wolf: ORDER entered. MEMORANDUM AND ORDER. Case stayed. (Bartlett, Timothy)

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

DANA-FARBER CANCER INSTITUTE, INC.,

Plaintiff

v.
C.A. No. 15-13443-MLW
ONO PHARMACEUTICAL CO., LTD., TASUKU
HONJO, E.R. SQUIBB & SONS, L.L.C.,
and BRISTOL-MYERS SQUIBB, CO.,
Defendants.
MEMORANDUM AND ORDER
WOLF, D.J.

May 2, 2016

In this case,
(" Dana - Farber")
Defendants

plaintiff Dana-Farber Cancer Inst i tute,

seeks

Ono

to

correct

Pharmaceuticals,

(rlHonjo"), and E.R. Squibb
Co.

(collectively "BMS")

District

of

Delaware,

inventorship
Ltd.

of

("Ono") ,

five

Inc.

patents.

Tasuku

Honjo

Sons, L.L.C. and Bristol-Myers Squibb,

&

have moved to transfer this case to the
where

they

are

litigating

cases involving three of the five patents at

earlier-filed

issue here.

Dana-

Farber opposes that motion.
The court finds
overlap

between

the

that

there is a

instant

case

and

likelihood of substantial
the

Delaware

litigation.

However, the Delaware court is best suited to assess the extent of
this

overlap

and

determine

whether

interest of justice. Therefore,

transfer

would

be

in

the

the defendants are being ordered

to file promptly a motion requesting a decision from the District
of Delaware concerning whether this case should be transferred to

that

District.

If the

appropriate that

court

this

in Delaware

finds

that

it

is most

case proceed in tandem with the Delaware

litigation, this court will order that it be transferred pursuant
to 28 U.S.C. §1404(a). This case is being stayed pending resolution
of that issue.
I.

BACKGROUND
On September 25,

2015,

Dana-Farber filed this action in the

District Court of Massachusetts seeking to correct inventorship of
five cancer immunotherapy patents (the "Honjo patents"). The Honjo
patents are assigned to Ono and Honjo and licensed to BMS. Dana­
Farber

alleges

that

its

collaborating scientist,
the methods
that,

as

Dr.

employee,
Dr.

Dr.

Clive Wood,

described in the Honj 0
Freeman's assignee,

Gordon
are

patents.

Freeman,

and

a

j oint inventors of
It

further

alleges

it is a co-owner of the Honj 0

patents. Pursuant to a joint agreement, BMS and Honjo answered the
complaint

on

December

21,

2015.

Dana-Farber

served

its

first

discovery requests on BMS and Honjo in January 2016.
The Honjo patents are also being litigated in the District of
Delaware. On September 4,

2014,

June 30,

2015,

and July 7,

2015,

Ono, Honjo, and BMS filed three actions against Merck & Co., Inc.
and Merck Sharp

&

Dohme Corp.

(collectively "Merck")

actions have not been consolidated,

The three

but have been coordinated to

have identical pretrial schedules. Together, the three complaints
allege that Merck has infringed three of the five Honjo patents.
2

In its defense, Merck asserts, among other things, that the Honjo
patents are invalid.
On February 10, 2016, Ono,
this

Honjo,

and BMS moved to transfer

case brought by Dana-Farber in Massachusetts

to

Delaware,

where it could be coordinated with the three pending infringement
cases. See Docket No. 50. Alternatively, they moved to dismiss for
lack of
party,

personal

jurisdiction and

failure

to

join a

necessary

without prejudice to Dana-Farber refiling in the District

of Delaware. See Docket Nos. 53, 56. Dana-Farber opposes all three
motions on the grounds that the District of Delaware would not
have

jurisdiction

and,

in

any

event,

transfer

is

not

in

the

interest of justice. BMS and Honjo have not responded to discovery
requests,

and have moved to stay this case until the motion to

transfer and motions to dismiss are decided. See Docket No. 80.
On February 19,
cases,
Freeman.

served

2016,

subpoenas

Merck,

on

the defendant in the Delaware

Dana-Farber

and

its

employee,

Dr.

Merck seeks documents relating to the invention of the

methods described in the Honjo patents.

In response,

Dana-Farber

moved to modify the subpoenas by postponing the reply date until
BMS and Honjo responded to its January, 2016, discovery requests.
See

16-mc-91097,

Docket

No.1.

Dana-Farber

information disclosed

to Merck will

though

litigation,

the

Delaware

reach Ono,

prejudicing

argues

that

Honj 0,
its

any

and

BMS

ability

to

prosecute this Massachusetts case. Merck argues that it needs the
3

requested

documents

to

conduct

depositions

before

discovery

closes, on May 27, 2016, in the Delaware litigation.
Its present procedural posture complicates both this case and
the three Delaware cases. Merck asserts that it will be prejudiced
if it does not receive a timely response from Dana-Farber.

Dana­

Farber asserts that it will be prej udiced if it does not first
receive discovery from BMS and Honjo. Ono,

Honjo,

and BMS assert

that they will be prejudiced if litigation proceeds in parallel in
two districts.
In these

circumstances,

threshold

issues

are

whether

case should be litigated in Massachusetts or Delaware,

this

and which

court should decide that question.
II.

LEGAL STANDARD
"As

principle
Water

between
to

1S

federal
avoid

Conservation
"The

(1976)

v.

litigation."

United

manifestly

the

courts

duplicative

Dist.

concern

district

is

States,
to

general

Colorado

424

avoid

River

U.S.

800,

the

waste

817
of

duplication, to avoid rulings which may trench upon the authority
of sister courts, and to avoid piecemeal resolution of issues that
call for a uniform result." W.
Local 24,

S.

721,

(5th

729

1404 (a),

Atl.

&

Cir.

Gulf Mar.

Gulf Coast Dist.
1985)

Ass' n v.

of ILA,

Accordingly,

ILA Deep Sea

AFL-CIO,

pursuant

to

751 F.2d
18

U.S.C.

"a district court may transfer any civil action to any

other district or division where it might have been brought or to
4

any district or division to which all parties have consented." See
TPM Holdings,
Cir.
n.2

Inc. v.

Intra-Gold Indus.,

1996); Cianbro Corp.
(1st Cir.

1987);

(Fed. Cir. 1999)

v.

Inc.,

91 F.3d 1,

4 (1st

Curran-Lavoie,

Inc.,

814 F.2d 7,

8

see also In re Medrad,

Inc.,

215 F.3d 1341

("[I]t is within the district court's discretion

to transfer a related case in the interest of justice to a forum
that may not be more convenient [to the parties] .").
When two suits in different districts are identical, or nearly
so,

"the

usual

practice

is

for

the

court

that

first

had

jurisdiction to resolve the issues and the other court to defer."
TPM

Holdings,

identical
courts

91

actions

F.3d
are

at

4;

Cianbro,

proceeding

814

F.2d

concurrently

at
in

11

("Where

two

federal

the first filed action is generally preferred in a

choice-of-venue decision.").

"But where the overlap between two

suits is less than complete," the decision whether to transfer and
consolidate or to proceed in parallel "is made case by case .
based on such factors as the extent of overlap, the likelihood of
conflict,

[and] the comparative advantage and the interest of each

forum in resolving the dispute." TPM Holdings, 91 F. 3d at 4 (citing
Colorado River,

424 u. S.

at 817).

"Complete identity of neither

the parties nor of the lawsuit itself is required for dismissal or
transfer of a case filed subsequently to an action with substantial
overlap of substantive issues." Harris Cty.,

Tex. v. CarMax Auto

Superstores Inc., 177 F.3d 306, 319 (5th Cir. 1999).
5

The decision as

to whether there

is

sufficient overlap to

warrant transferring a case is generally made by "the jurisdiction
first seized of the issues." W. Gulf Mar. Ass'n,

751 F.2d at 730

(quoting Mann Manufacturing, Inc. v. Hortex, Inc., 439 F.2d 408 n.
6 (5th Cir. 1971)); Cadle Co. v. Whataburger of Alice,

Inc.,

F.3d 599,

v.

Transp.

606

Union,

(5th Cir.

1999);

110 F.R.D.

322,

Boston
329

(D.

&

Maine Corp.

Mass.

174

United

1986). Accordingly,

while the court in the later-filed action may decide whether there
is a "likelihood of substantial overlap," the court in the firstfiled

action

should

determine

substantial overlap.'" Boston
(emphasis in original)
730)

&

"whether

there

Maine Corp.,

(quoting W.

Gulf Mar.

actually

110 F. R. D.
Ass'n,

at

[is]
329

751 F.2d at

.1

III. DISCUSSION
There is some overlap between the instant action and the three
Delaware cases. There is overlap in the subject matter. Three of

1 The
First Circui t has neither adopted nor rej ected the Fi fth
Circuit's approach in West Gulf and Cadle. See In re Atlas IT EXp,
Corp., 761 F.3d 177, 188 (1st Cir. 2014), cert. dismissed sub nom.
Pinpoint IT Servs., LLC v. Rivera, 135 S. Ct. 1758 (2015). However,
as in the past, this court finds that it is most appropriate to
permit the court in Delaware, which has the greater familiarity
with the issues and whose earlier-filed cases will be impacted, to
decide, as a practical matter, whether these related cases should
all be litigated in Delaware. See Boston & Maine Corp., 110 F.R.D.
at 329.

6

the five patents at issue in this case are also being litigated in
Delaware. The court in Delaware will need to construe the relevant
claims in those patents.
"first

step

Its claim construction will also be the

in determining

inventorship"

in

this

Massachusetts

case. Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292, 1304 (Fed.
Cir. 2002). In addition, as Ono, BMS, and Honjo are parties to all
four cases, there is overlap in the parties.
This overlap raises concerns about the "ills" of duplicative
litigation. W. Gulf Mar. Ass'n,

751 F.2d at 729. Both this court

and the court in Delaware may be required to hear evidence and
make decisions regarding the invention of the methods described in
the Honj 0

patents.

The resources of the courts and the parties

devoted to these issues may be increased by duplicative litigation.
See Cianbro, 814 F.2d at 11. Significantly, parallel litigation of
the same or similar issues could lead to inconsistent
regarding

the

contruction

claims

of

and,

inventorship and ownership of the patents.

findings

ultimately,

the

Such a result "would

create conflicting obligations with regard to the issues addressed
by the court." See Boston and Maine Corp., 110 F.R.D. at 329.
Parallel litigation also may result in piecemeal resolution
of related issues.

If Dana-Farber succeeds in having Dr.

Freeman

and Dr. Wood added as a joint inventors of the Honjo patents,

it

may have a claim of joint ownership over the patents. See Israel
Bio-Eng'g Project v. Arngen,

Inc.,
7

475 F.3d 1256,

1264

(Fed. Cir.

2007).

Any such claim,

if established,

could make Dana-Farber a

necessary plainti ff in the Delaware cases. See id.

("Where one co­

owner possesses an undivided part of the entire patent, that joint
owner must join all the other co-owners to establish standing.").
In view of the foregoing,

the court finds

that there is a

likelihood of substantial overlap between the instant case and the
Delaware

cases.

Delaware

court

determination"
consolidated

It

is,

therefore,

should,

in

of

whether

this

with

the

most

case

Delaware

that

make

effect,

appropriate

"ultimate

should
cases

be
or

the

transferred
should

the

and

proceed

independently. W. Gulf Mar. Ass'n, 751 F.2d at 730; see also Boston
&

Maine Corp.,

"first

seized"

110 F.R.D.
of

the

at

329.

issues

The District of Delaware was

relating to the

methods described in the Honjo patents.

See W.

invention of

the

Gulf Mar. Ass'n,

751 F.2d at 730. The Delaware court is also best able to decide if
it would have jurisdiction over Dana-Farber's claims.
Accordingly,

the court

is ordering Ono,

Honjo,

and BMS to

file promptly a motion in the District of Delaware requesting a
decision on whether transfer of this case to that district would
be in the interest of justice. The issue has been fully briefed in
this court. The court expects that the court in Delaware will be
able to rely on this briefing and,

if necessary,

provide Dana­

Farber and Ono, Honjo, and BMS the opportunity to be heard further.
If the Delaware court decides that transfer would be appropriate,
8

this court will order the transfer of this case to the District of
Delaware pursuant to 28 U.S.C. §1404(a). This case is being stayed
pending that decision.
IV.

ORDER
In view of the foregoing,
1.

it is hereby ORDERED that:

Defendants shall file promptly a motion in the District

of Delaware requesting a decision concerning whether a transfer of
this case by this court to the District of Delaware is appropriate.
The parties shall promptly report that decision to this court.
2.

Defendants'

Motion to Stay

(Docket No.

80)

is ALLOWED

and this case is STAYED pending further order of this court.

~ ~.~"--1
UNITED STATES DISTRICT JUDGE

~

9