BAYER PHARMA AG et al v. WATSON LABORATORIES, INC. et al

Filing 28

OPINION. Signed by Magistrate Judge Joseph A. Dickson on 6/2/14. (DD, )

NOT FOR PUBLICATION
THE UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

·------------------------------------------------------------------------------------------1
BAYERPHARMAAG,BAYER
·
INTELLECTUAL PROPERTY GMBH,
and BAYER HEALTHCARE
PHARMACEUTICALS,

Civil Action No. 14-1804 (JLL) (JAD)

Plaintiffs,

v.
WATSON LABORATORIES, INC.,
ACT AVIS, INC., and ACT AVIS PHARMA,
INC.

I
I

1

Defendants.
-------------------------------------------------------------------------------------BAYER PHARMA AG, BAYER
INTELLECTUAL PROPERTY GMBH,
I
andBAYERHEALTHCARE
i
PHARMACEUTICALS,
I
Plaintiffs,

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Civil Action No. 14-2065 (JLL) (JAD)

OPINON ON DEFENDANTS'
MOTIONS TO TRANSFER
PURSUANT TO 28 U.S.C. § 1404(a)

v.
PAR PHARMACEUTICALS, INC., PAR
PHARMACEUTICAL COMPANIES, INC. '
Defendants.

J

--------------------------------------------------------------------------------------------------

JOSEPH A. DICKSON, U.S.M.J.
This matter comes before the Court upon identical motions filed by Defendants Wat n
Laboratories, Inc., Actavis, Inc. and Actavis Pharma, Inc. (in Civil Action No. 14-1804) and y
Defendants Par Pharmaceutical, Inc. and Par Pharmaceutical Companies, Inc. (in Civil Act n
No. 14-2065) to transfer these matters to the United States District Court for the District of
Delaware pursuant to 28 U.S.C. § 1404(a) (the "Motions to Transfer"). (ECF No. 10 in C i1

Action No. 14-1084 and ECF No. 9 in Civil Action No. 14-2065). The Hon. Jose L. Linar s,
U.S.D.J. referred Defendants' motions to this Court for resolution. In accordance with Rule 8
of the Federal Rules of Civil Procedure, the Court did not hear oral argument on th e
applications. As set forth in detail below, while most of the factors relevant to the Co
transfer analysis are either neutral or of relatively minor weight, the public interest fac r
concerning certain "practical considerations" that might make trial more expeditious

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inexpensive weighs overwhelmingly in favor of transfer. Upon consideration of the parti '
submissions, therefore, Defendants' Motions to Transfer are GRANTED. These cases s
both be transferred to the United States District Court for the District of Delaware.

I.

BACKGROUND AND PROCEDURAL HISTORY
The background facts and procedural history relevant to Defendants' motions do

appear to be in dispute. The information below is gleaned from the parties' pleadings, as wel

ot
s

the documents submitted in connection with the pending motions.
a.

The Compound Patent Litigation Pending in Delaware

In or about November of 1997, Plaintiffs began the process of applying for patents n
vardenafil, a chemical compound developed for the treatment of erectile dysfunction. (Pl.,
ECF No. 20, at 3). 1 Plaintiffs subsequently obtained U.S. Patent No. 6,362,178 on March
2002, ('178 Patent, Decl. of Thomas S. Fletcher, Ex. 3, ECF No. 20-3), and U.S. Patent
7,696,206 on April13, 2010, ('206 Patent, Decl. of Thomas S. Fletcher, Ex. 4, ECF No. 20
both ofwhich concerned the chemical compound vardenafil (collectively, the '178 Patent and

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'206 Patent are referred to as the "Compound Patents").

1

While Defendants filed motions in both Civil Action Nos. 14-1804 and 14-2065, the brie g
and supporting certifications are identical in both matters. For the sake of clarity, and unl ss
otherwise specified, the Court's citations refer to the documents filed in Civil Action No. 41804.
2

Defendant Watson Laboratories, Inc. submitted Abbreviated New Drug Applicati n
("ANDA'') No. 203689 to the United States Food and Drug Administration ("FDA"). (

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Compl. in Bayer Pharma AG et al. v. Watson Labs. Inc., No. 12-517 (GMS), Decl. of Brian .
Robinson (Corrected) ("Robinson Decl."), Ex. A, Doc. 13 at 6). That ANDA covered Wats n
Laboratories, Inc.'s "Vardenafil Hydrochloride Orally Disintegrating Tablets", a generic versi n
of Plaintiffs' STAXYN© product. (Id.).

On April 25, 2012, Plaintiffs in this case file

a

complaint in the United States District Court for the District of Delaware, alleging that Wat n
Laboratories, Inc. infringed upon the '178 and '206 Patents by submitting the ANDA and t at
W atsons Laboratories, Inc. and its affiliates, Watson Pharmaceuticals, Inc and Watson Ph
Inc. (now known as Actavis, Inc. and Actavis Pharma, Inc., respectively), would continue to o
so by marketing and distributing their proposed, generic vardenafil product. (Id. at 9-16) ( e
"Delaware Watson Action").
While the Delaware Watson Action was pending, Defendant Par Pharmaceutical, I c.
prepared and submitted ANDA No. 204786 for its own generic vardenafil product. (See Co

1.

in Bayer Pharma AG et al. v. Par Pharm.. Inc., No. 13-845 (GMS), Robison Decl., Ex. G, at 8 ).
On May 14, 2013, Plaintiffs filed a complaint against Par Pharmaceutical, Inc. and

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Pharmaceutical Companies, Inc., alleging that those defendants had infringed upon the '178

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'206 Patents by submitting the ANDA and would continue to do so by selling their gen ·c
version ofSTAXYN©. (Id. at 84-91) (the "Delaware Par Action"). 2
b.

The Formulation Patent Litigations Before This Court

On December 23, 2014, Plaintiffs received U.S. Patent No. 8,613950, which pertaine
the specific formulation of STAXYN© as an orally disintegrating vardenafil tablet (i.e.,
2

The Delaware Watson Action and Delaware Par Action are collectively referred to as
"Delaware Actions."
3

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chemical mechanism through which vardenafil is released into the system as opposed to
composition of vardenafil itself) ('950 Patent, Decl. of Thomas S. Fletcher, Ex. 2, ECF No.
2). By letter dated, February 6, 2014, Defendant Watson Laboratories, Inc. once again advi
Plaintiffs of ANDA No. 203689, this time in connection with the '950 Patent. (Compl., ECF
1,

~

28). Defendant Par Pharmaceutical, Inc. did the same with regard to its own ANDA,

204786, by letter dated March 17, 2014. (Compl. in Civil Action No. 14-2065, ~ 23). Plainti s
then filed one suit in this District against the Watson/Actavis defendants (Civil Action No.
1804, filed on March 21, 2014) and another against the Par defendants, (Civil Action No.
2065, filed on April 2, 2014), alleging that those defendants' ANDAs violated the '950 Pat
and that their efforts to market and sell generic versions of STAXYN© would continue to do o
in the future. (See generally Compl., ECF No. 1; Compl. in Civil Action No. 14-2065).
Therefore, both the Delaware Actions and the Formulation Patent litigations pending in
this District involve the same parties, the same products and the same ANDAs.

c.

The Relevant Procedural Posture of The Various Litigations

Chief Judge Gregory M. Sleet, U.S.D.J., who is presiding over both of the Delaw e
Actions, had previously scheduled a trial in the Delaware Watson Action for March 20 4.
(Docket Sheet for Delaware Watson Action, Decl. of Thomas S. Fletcher, Ex. 10, ECF No.2 5,
at 56). Following a conference call conducted on January 17, 2014, Judge Sleet entered an Or er
consolidating the Delaware Watson Action and the Delaware Par Action for trial. (ld.). Ju

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Sleet indicated that the Delaware Actions would be tried together in April 2015, (Tr. of Jan.
2014 Tel. Conf., Decl. of Thomas S. Fletcher, Ex. 1, ECF No. 20-2, at 13:22-14:6, 20:4-10),
that, if Plaintiffs commenced litigation concerning the '950 Patent in the District of Delaware, e
would "consolidate that action with the others and try them in April of2015." (ld. at 20:14-1

4

Judge Sleet made clear, however, that he was not requiring Plaintiffs to litigate the '950 Paten in
Delaware. (Id. at 14:4-8).
As noted above, Plaintiffs elected to file complaints alleging infringement of the '

0

Patent in the District of New Jersey. Defendants in both actions then filed motions to tr
these matters to the District of Delaware.
II.

LEGAL ANALYSIS
a.

The Legal Standards Applicable on a Motion to Transfer Under § 1404(a)

Defendants ask the Court to transfer these actions to the United States District Court

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the District of Delaware pursuant to 28 U.S.C. § 1404(a). That statute provides, in pertin
part, that "[f]or the convenience of parties and witnesses, in the interest of justice a
district court may transfer any civil action to any other district or division where it mi
have been brought." The purpose of§ 1404(a) is to "prevent the waste of time, energy
money and to protect litigants, witnesses and the public against unnecessary inconvenie
and expense."

Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (internal quotations

citations omitted). The decision of whether to transfer a case is committed to the trial co
sound discretion. Cadapult Graphic Sys. v. Tektronix, Inc., 98 F. Supp. 2d 560, 564 (D.
2000); Days Inns Worldwide. Inc. v. RAM Lodging, LLC, No. 09-2275, 2010 WL 1540926 at
*2 (D.N.J. April14, 2010).
In determining whether to transfer a matter pursuant to§ 1404(a), and based on the pl in
language of that statute, a court must consider: (1) the convenience of the parties, (2)
convenience of the witnesses, and (3) the interests of justice. Ra o ort v. Steven S ielb
Inc., 16 F. Supp. 2d 481, 497 (D.N.J. 1998). In addition to these statutory factors, the Uni

5

States Court of Appeals for the Third Circuit has established a list of public and private inter ts
that a court should examine when deciding whether to transfer an action::
The private interests have included: plaintiffs forum preference as
manifested in the original choice; the defendant's preference;
whether the claim arose elsewhere; the convenience of the parties
as indicated by their relative physical and financial condition; the
convenience of the witnesses-but only to the extent that the
witnesses may actually be unavailable for trial in one of the fora;
and the location of books and records (similarly limited to the
extent that the files could not be produced in the alternative
forum).
The public interests have included: the enforceability of the
judgment; practical considerations that could make the trial easy,
expeditious, or inexpensive; the relative administrative difficulty in
the two fora resulting from court congestion; the local interest in
deciding local controversies at home; the public policies of the
fora; and the familiarity of the trial judge with the applicable state
law in diversity cases.
Jumara v. State Farm Ins. Co., 55 F.3d 873, 879-80 (3d Cir. 1995)).
The Court must, therefore, engage in a two part analysis to determine whether any mot n
to transfer venue should be granted. As a threshold matter, the Court must decide whether
transferee district has proper jurisdiction and venue, such that the case could have been brou t
in the transferee district in the first instance. Lawrence v. Xerox Corp., 56 F. Supp. 2d 442,
(D.N.J. 1999). The Court must then conduct an "individualized, case-by-case consideration of
convenience and fairness" regarding which forum is most appropriate to consider the case.

d.

"There is no rigid rule governing a court's determination; 'each case turns on its facts."'
(citing Lacey v. Cessna Aircraft Co., 862 F.2d 38, 43 (3d Cir. 1988) (internal citations omitt
Rappoport, 16 F. Supp 2d at 498 ("Transfer analysis under Section 1404 is a flexible
individualized analysis and must be made on the unique facts presented in each case.") (ci
Piper Aircraft Co. v. Reyno, 454 U.S. 235, 249-250 (1981)). The Court is also mindful of

6

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Third Circuit's admonition against any court considering the merits of a case during

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pendency of a transfer application. McDonnell Douglas Corp. v. Polin, 429 F.2d 30 (3d
1970) ("Judicial economy requires that another district court should not burden itself with

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merits of the action until it is decided that a transfer should be effected and such considera

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additionally requires that the court which ultimately decides the merits of the action should

o

decide the various questions which arise during the pendency of the suit instead of considerin it
in two courts.")

b.

Plaintiffs Could Have Brought These Actions in Delaware

28 U.S.C. § 1404(a) provides, in pertinent part, that "a district court may transfer

y

civil action to any other district or division where it might have been brought." As a thresh ld
issue, therefore, the Court must determine whether venue for these matters would be appropri te
in the United States District Court for the District of Delaware. If venue is not appropriat in
that District, the Court may not effectuate the requested transfers pursuant to 28 U.S.C
1404(a). While Defendants addressed the venue issue only in passing, (Def. Br., ECF No. 1
at 14) and Plaintiffs ignored it entirely, (see generally Pl. Br., ECF No. 20), the Court
analyze this fundamental point to determine if transfer would be permissible.
28 U.S.C. § 1391 sets forth the standards for venue in the United States District Co
See 28 U.S.C. § 1391(a) ("Except as otherwise provided by law ... this section shall govern

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venue of all civil actions brought in district courts of the United States"). In tum, Sect n
1391(b) provides, in pertinent part, that "[a] civil action may be brought in ... a judicial dis

7

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in which any defendant resides, if all defendants are residents of the State in which the distric is
located. " 3
Here, Plaintiffs have alleged, and Defendants do not contest, that Defendants

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Pharmaceutical, Inc. and Par Pharmaceutical Companies, Inc. are incotporated under Delaw e
law. (Civil Action No. 14-2065, ECF No. 1, W5-6; ECF No. 30, W5-6). The parties' pleadi
similarly establish that Defendant Actavis Pharma, Inc. is a Delaware entity. (Civil Action
14-1804, ECF No. 1,

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7; ECF No. 15,

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7). Each of those entities is therefore subject o

personal jurisdiction in Delaware and, thus, "resides" there for venue pUtposes in accord
with 28 U.S.C. § 1391(c). The remaining defendants, Watson Laboratories, Inc. and Acta
Inc. have consented to personal jurisdiction in the District of Delaware with regard to this ma
(Def. Br., ECF No. 10-1, at 14), so those entities also "reside" in Delaware pursuant to 28 U.S
§ 1391(c). NCR Credit Corp. v. Ye Seekers Horizon, 17 F. Supp. 2d 317, 320 (D.N.J. 19

(where defendant consented to personal jurisdiction in New Jersey, that defendant was found o
"reside" in New Jersey for venue putposes in accordance with 28 U.S.C. § 1391(c)). As
Defendants reside in the District of Delaware, venue would be appropriate in that District
both Civil Action No 14-1804 and Civil Action No 2065. See 28 U.S.C. 1391{b)(l). Based n
the foregoing, the Court finds that Plaintiffs could have commenced these actions in the Dis
of Delaware, and that the Court may therefore transfer both cases to that District if such trans
would otherwise be appropriate.

3

28 U.S.C. § 139l(c) provides in pertinent part that, for venue pUtpOses, an entity "shall e
deemed to reside, if a defendant, in any judicial district in which such defendant is subject to e
court's personal jurisdiction with respect to the civil action in question."

8

c.

Analysis of the Jumara Factors

Having determined that venue for these cases would be appropriate in the District
Delaware, the Court must now analyze the private and public interest factors relevant o
Defendants' transfer application. As discussed above, the United States Court of Appeals for

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Third Circuit enumerated those factors in Jumara, 55 F.3d at 879-80. The Court also notes
Defendants retain the burden of establishing that transfer is appropriate. In re Amendt, 169
App'x 93, 96 (3d Cir. 2006).

i.

Private Interest Factors

With regard to the "private interest" factors relevant to a 1404(a) analysis, the
Circuit has directed courts to consider "plaintiff's forum preference as manifested in the origi al
choice; the defendant's preference; whether the claim arose elsewhere; the convenience of

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parties as indicated by their relative physical and financial condition; the convenience of

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witnesses -- but only to the extent that the witnesses may actually be unavailable for trial in
of the fora; and the location of books and records (similarly limited to the extent that the fi s
could not be produced in the alternative forum)."

Jumar~

55 F.3d at 879-80. The Court

address each of these factors in tum.

A.

The Parties' Choice of Forum

Within the Third Circuit, a plaintiff's choice of forum is a "paramount concern"
deciding a motion to transfer venue. Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d
1970). When a plaintiff chooses its home forum, that choice is "entitled to greater deferenc ."
Sandvik, Inc. v. Cont'l Ins. Co., 724 F. Supp. 303, 307 (D.N.J. 1989). Here, Plaintiff Ba er
Healthcare Pharmaceuticals, Inc. resides in in both New Jersey and Delaware and has chosen

9

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of its home fora for this litigation.4 The Court acknowledges, however, that ''when the cen al
facts of a lawsuit occur outside of the chosen forum, plaintiffs choice of forum is accorded 1 s
weight." NCR Credit Corp., 17 F. Supp. 2d at 321; Melone v. Boeing Co., No. 07-cv-11
(DMC), 2008 U.S. Dist. LEXIS 25367, *5-6 (D.N.J. Mar. 28, 2008) ("Deference to the plainti s
selected forum is also diminished 'where the central facts of a lawsuit occur outside the cho n
forum' or the plaintiffs choice of forum 'has little connection with the operative facts of
lawsuit."') (quoting In reConsolidated Parlodel Litig., 22 F. Supp. 2d 320, 324 (D.N.J. 199
As discussed in Section II(c)(i)(B), below, the parties have not placed sufficient informatio
the record to allow the Court to determine where the "central facts" of this lawsuit occurred.
Court will not, therefore, reduce the deference afforded to Plaintiffs' choice of forum. Thou
does not change the analysis in this case, this Court suggests that, as a practical matter,
parties' forum preferences are less important in a typical Hatch-Waxman litigation, where
patent infringement at issue flows, as a matter of statute, from a defendant's submission of
ANDA to the FDA (rather than any transactions or other activities in the forum).
While the Court acknowledges that Defendants would prefer to litigate in the District
Delaware, Defendants are the moving parties here, and thus bear the burden of persuas n
regarding their motions to transfer.

Plum Tree. Inc. v. Stockment 488 F.2d 754, 756

Cir.l973). To overcome the presumption in favor of Plaintiffs' choice of forum, Defend
must show that the balance of conveniences weighs "strongly in favor" of transfer to a m re
convenient forum. Shutte, 431 F.2d at 25. As set forth in connection with the Court's discuss n
of the other Jumara factors, the Court finds that Defendants have carried that burden.

4

The Court notes that the proposed transferee forum, the District of Delaware, is also Plainti
Bayer Healthcare Pharmaceuticals, Inc.'s home forum.
10

B.

Where the Causes of Action Arose

Neither Plaintiffs nor Defendants have provided the Court with sufficient guidance as o
where the causes of action at issue in these matters "arose." ''This factor turns on which fo

Inc. v. Gill, No. 13-4474 (JAP), 2013 U.S. Dist. LEXIS 154825, *21 (D.N.J. Oct. 29, 20
(citing Park Inn lnt'l. L.L.C. v. Mody Enters., 105 F. Supp. 2d 370, 377-78 (D.N.J. 2000); =ac=c=w:=
Master Cutlery, Inc. v. Panther Trading Co., No. 12-4493 (JLL), 2012 U.S. Dist. LEXIS 1786 9,
*9-10 (D.N.J. Dec. 14, 2012) ('"The locus of the alleged culpable conduct determines the pl e
where the claim arose.'

Intellectual property infringement occurs, among other places, wh e

any allegedly infringing articles are sold") (internal citations omitted).
Here, Plaintiffs contend that Defendants infringed upon the '950 patent by submi
their respective AND As, and that, if those AND As are approved, Defendants will continue o
infringe upon that patent by marketing generic versions ofSTAXYN®. (Compl. in Civil Ac
No. 14-1804,

~~

36-46; Compl. in Civil Action No. 14-2065,

W 31-41).

n

The only aile

instances of infringement that have allegedly occurred to date, therefore, are Defend
respective ANDA submissions. 5 Neither party has provided the Court with a definitive rule
where the "center of gravity'' for such infringement might be.
Defendants argue, without citation, that "there are no meaningful connections betw n
New Jersey and the events that gave rise to these actions. All of the design, development
testing of the accused products took place in India." (Pl. Rep., ECF No. 26, at 9; Pl. Br., E
No. 10-1, at 7). Defendants do not, however, cite any authority for the proposition that

5

The Court notes that, pursuant to 35 U.S.C. § 271(e)(2)(A), "[i]t shall be an act ofinfringem t
to submit [an ANDA application] . . . for a drug claimed in a patent or the use of whic
claimed in a patent."
11

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"center of gravity'' for Plaintiffs' infringement claims is the place where Defendants deve1o
or tested its generic products. While Plaintiffs contend that "courts have looked to where
ANDA was prepared and submitted as relevant considerations" in this analysis, (Pl. Br., E
No. 20, at 13), they do not establish the locations from which Defendants prepared or sent
ANDAs at issue. 6 The parties agree that Defendants filed their ANDAs with the FDA, and, m e
specifically, it appears that those AND As were directed to the FDA's Office of Generic Drugs n
See U.S. Food and Drug Administration, Abbreviated

Rockville, Maryland.
Application

(ANDA):

http://www.fda.gov/Drugs/DevelopmentApprovalProcess/HowDrugsareDevelopedandApprov
ApprovalApplications/AbbreviatedNewDrugApplicationANDAGenerics/default.htm (last visi
May 27, 2014).

Therefore, though Plaintiffs correctly state that nothing in the rec

demonstrates that Defendants' ANDAs were prepared in or submitted from Delaware, (id. at 1 ),
it appears that the same may be said of New Jersey. As "[n]either of these competing argume ts
can be said to definitely establish where [Plaintiffs claims] arose ... the Court finds this fac r
to be neutral to the transfer analysis." Ki-The Kim v. BMW ofN. Am .. LLC, No. 12-CV-02
(CCC), 2013 U.S. Dist. LEXIS 23950, *11 (D.N.J. Feb. 19, 2013).
C.

The Relative Convenience of the Parties

This factor requires the Court to examine ''the convenience of the parties as indicated
their relative physical and financial condition." Jumara, 55 F.3d at 879. Neither Plaintiffs

r

Defendants have addressed this factor squarely by comparing their relative financial positio
Instead, Defendants argue that Plaintiff Bayer Healthcare Pharmaceuticals, Inc. "selec
6

This evidentiary gap is significant. For instance, while several Defendants maintain t ir
headquarters in New Jersey, Plaintiffs allege that Defendant Watson Laboratories, Inc., whi h,
Plaintiffs contend, submitted the ANDA at issue in Civil Action No. 14-1804, (Compl., ECF
1, ~ 1), actually maintains its headquarters in California. (Id. ~ 6).
12

Delaware as its forum of choice for all seven of its prior-filed suits asserting its vardena 1
patents", (Def Br., ECF No. 10-1, at 13) (emphases in original), thereby suggesting t t
Delaware would be a convenient forum for Plaintiffs to litigate these matters as well. 7
Plaintiffs contend that, because Defendants each have their headquarters in New Jersey, 8

"

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convenience of the parties thus cannot point strongly in favor of Delaware." (Pl. Br., ECF
20, at 13). While the Court believes it is self-evident that a single trial in one state would e
more convenient to all parties than multiple trials in two states, nothing in the record sugge
that either New Jersey or Delaware would be more convenient for the parties based on th ·
"relative physical and financial condition." The Court therefore fmds that this factor is neutral o
the transfer analysis.

D.

The Convenience of the Witnesses and Location of Documen

In connection with considerations of witness convenience, Plaintiffs contend that

"may wish to call third-party fact witnesses to testify about [relevant] prior art issues",

fuh at

(emphasis added), and that, given their location in the "New York City area", those witnes s
"can be compelled to testify at trial in New Jersey, but not iri Delaware." (Id. at 15). Defend
also represent that they "may wish to call non-party inventors of a prior art reference relating o
[a technology that] is one of the main ingredients in the examples of the '950 patent" and
those "inventors" live in Delaware and are not subject to subpoena power in New Jersey. (
Rep., ECF No. 26 at 11-12, n.8) (emphasis added). Both parties therefore argue that they mi

7

At least one Court in this District has previously found that a party's repeated litigation i
foreign district is relevant to the convenience analysis, as it "suggests that litigating in [
district] is not a hardship to Plaintiff and that Plaintiff is already familiar with the [distric
local procedures." Telebrands Corp. v. martFIVE, LLC, No. 13-3374, 2013 U.S. Dist. LE
124420, *24 (D.N.J. Aug. 30, 2013).
8
Plaintiffs make this statement despite alleging that Defendant Watson Laboratories, Inc. has ts
principal place ofbusiness in California. (Civil Action No. 14-1804, ECF No.1,~ 6).
13

call certain non-party witnesses who might also be unwilling to travel. 9 Defendants also cont
that the Court should consider the inconvenience of having party witnesses attend multiple tri
(Def. Br., ECF :No. 10-1, at 12; Def. Rep. Br., ECF No. 26, at 11). Nothing in the reco d,
however, confirms that any witnesses would be unable or unwilling to travel to either
District or the District of Delaware, which is the sole relevant consideration for this factor un r
Jumara. 55 F.3d at 879. The Court therefore fmds that this factor is neutral to the trans er
analysis.
Similarly, nothing in the record demonstrates that the relevant documents would

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unavailable in either District. Id. Indeed, Plaintiffs suggest, and this Court agrees, that th e
documents "could be produced in whichever forum has the case." (Pl. Br., ECF No. 20, at
This factor, therefore, is also neutral.

ii.

Public Interest Factors

In addition to the "private interest" considerations discussed above, the Third Circuit

directed courts to take certain "public interest" factors into account when adjudicating a mot n
to transfer, including: "the enforceability of the judgment; practical considerations that co
make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the
fora resulting from court congestion; the local interest in deciding local controversies at ho
the public policies of the fora, and the familiarity of the trial judge with the applicable state 1 w
in diversity cases." Jumara, 55 F.3d at 879-80.

9

The Court notes that, while all parties are now discussing the potential need for third-party fi
witnesses in these cases, counsel for Defendant Watson expressly represented to Judge Sleet t
both the "compound cases" pending in the District of Delaware and the formulation cases
currently pending in this District were "expert case[s]." (Tr. of Jan. 17, 2014 Tel. Conf., Decl. f
Thomas S. Fletcher, Ex. 1, ECF No. 20-2, at 10:13-11:3). Plaintiffs' counsel did not challeng
that representation.
14

A.

Enforceability of Judgments

The "enforceability of the judgment" factor is neutral, as a judgment rendered in eitl er
this District or the District of Delaware could easily be registered in another district.
B.

Practical Considerations Regarding Trial

"[P]ractical considerations are relevant and warrant transfer if they could make the t1 al
easy, expeditious, or inexpensive.

One practical consideration that supports transfer is

efficiency." Metro. Life Ins. Co. v. Bank One, N.A., No. 03-1882 (SDW), 2012 U.S. D

~t.

LEXIS 137119, * (D.N.J. Sept. 25, 2012). In line with that principle, "[t]he Supreme Court las
held that allowing lawsuits with similar issues to proceed simultaneously in different distri ts
'leads to wastefulness of time, energy and money that [section] 1404(a) was designed

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prevent."' COA Network, Inc. v. J2 Global Communs.. Inc., No. 09-6505 (WJM), 2010 U Is.
Dist. LEXIS 60116, *13-14 (D.N.J. June 17, 2010) (quoting Cont'l Grain Co. v. Bar2e FBL-5 5,
364 U.S. 19, 26 (1960)); Platinum Ptnrs. Value Arbitrage Fund, L.P. v. TD Bank, N.A., No. k>6457 (ES), 2011 U.S. Dist. LEXIS 84689, *20-21 (D.N.J. Aug. 2, 2011) ("Transfer is of

~n

meant as a time saving device, for the parties and for the Court. Thus, the transfer of a ci i1
action to another district where similar cases are already pending 'serves not only priv te
interests but also the interests of justice."') (internal citations omitted). The Court notes that t is
factor will weigh in favor of transfer as long as the cases are sufficiently similar, and that !le
legal claims and issues involved need not be identical. See Platinum Ptnrs. Value

Arbitr~

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Fund, L.P., 2011 U.S. Dist. LEXIS 84689 at *21-23 (finding that, where cases already pend 1g
in the Southern District of Florida ''related generally'' to a case pending in this District, but w ire
not so similar that they would necessarily be consolidated upon transfer, that similarity s
weighed in favor of transfer).
15

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Plaintiffs stress that their claims in these cases are distinct from those at issue in
Delaware Actions. (Pl. Br., ECF No. 20, at 15-20). The Court recognizes that the two sets
cases are not identical. They are, however, obviously quite similar. Both sets of cases invo e
the same parties, the same ANDAs and the same products (name brand STAXYN© I gen
versions of the drug) and it appears that both will involve testimony from some of the same p
witnesses and consideration of at least some of the same party documents regarding
development of both the products at issue and Defendants' ANDAs. In short, the prim
distinction between the two sets of cases is that, while the Delaware Actions concern whet
Defendants' ANDAs unlawfully infringe upon the Compound Patents (i.e., with regard to
chemical makeup of the compound vardenafil, the active ingredient in STAXYN©), the ca s
pending in this District are focused on whether the same ANDAs also infringe upon Plainti

s

Formulation Patent (i.e., concerning the specific formulation of STAXYN© as a tablet
delivers vardenafil by disintegrating in a patient's mouth). While adjudication of Plainti
claims regarding the Formulation Patent will necessarily require additional evidence and ex
testimony on the formulation-specific issues, there is no valid reason why those issues could
should) not be tried together with Plaintiffs Compound Patent claims. Indeed, Judge Sleet
already determined that, if Plaintiffs chose to litigate their Formulation Patent claims in
District of Delaware, His Honor would consolidate those cases with the pending Compo
Patent cases for a single trial, (Tr. of Jan. 17, 2014 Tel. Conf., Decl. ofThomas S. Fletcher,
1, ECF No. 20-2, at 20:4-16), and found that including the formulation issues in that trial wo d
not ''unduly or really terribly complicate[] the issue for this Court at all." (llL at 13:19-22).
This example of judicial efficiency is precisely the sort of practical consideration tha is
vital to a transfer analysis. As noted, Judge Sleet will be conducting a trial regarding

16

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Compound Patents in April2015. Any adjudication of claims related to the Formulation Pate ts
could simply be folded into that trial, which will take place regardless of how this Court resol s
Defendants' motions to transfer. Indeed, counsel for Defendant Watson represented to Ju e
Sleet that, in his estimation, including the formulation issues in that trial would not "invo e
extending the trial beyond the five days that are [already] scheduled."
Conversely, were these matters to remain pending in the District of New Jersey, this Dis
would have to conduct one or more separate trials. This second set of trials would not e
necessary if the matters were resolved in Delaware. Thus, the Court finds that the bur n
imposed on this District's judicial resources should these matters remain pending here
exceeds the added burden that the District of Delaware would face by incorporating
Formulation Patent issues into the consolidated trial it has scheduled for April of2015.
Similarly, transfer would result in less expense for the parties, as issues related to b th
the Compound Patents and the Formulation Patent could be addressed in a single proceedi g.
The record reflects that resolving the Formulation Patent issues as part of the Delaware Acti

s

will only modestly extend the scheduled trial for those matters. (Id. at 11 :4-7). In any event,

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Court finds that it would be less expensive for the parties to conduct a single trial in Delaw
rather than one full trial in Delaware and then at least one additional trial inNew Jersey.
Based on the foregoing, the Court finds that this factor weighs very heavily in favor f
transfer.
C.

Relative Administrative Difficulty

The Third Circuit also requires that Courts consider the administrative difficul

s

associated with proceeding in either district, in light of the relative docket congestion of the £
Jumara, 55 F.3d at 879. Plaintiffs argue that, according to United States Court Managem t

17

Statistics, the District of Delaware has a higher caseload per judge than the District of N w
Jersey.

(Pl. Br., ECF No. 20, at 20).

In response, Defendants argue that, despite th e

"workload per judge" statistics, "the median length of time to trial in New Jersey is three mon s
more than in Delaware." (Def. Rep. Br., ECF No. 26, at 10). This Court recognizes that b
Districts are quite busy. This situation is somewhat unique, however, in that Judge Sleet
already indicated that, if these cases were to come before the District of Delaware, His Ho r
would consolidate them with the Delaware Actions and conduct a single trial on all of
parties' claims in April of2015. (Tr. of Jan. 17,2014 Tel. Conf., Decl. ofThomas S. F1etc
Ex. 1, ECF No. 20-2, at 14:4-8; 20:14-16).
If the Court were to transfer these matters to the District of Delaware, therefore,
increase to that Court's workload would be incremental, as it must already conduct a trial in
Apri12015 on the existing Delaware Actions. 10 As noted in Section II(c)(ii)(B), ifthese matt s
were transferred, Judge Sleet could (and would) try the Formulation Patent issues as part of at
trial. If these matters remain pending in the District ofNew Jersey, however, this District wo 1d

10

The Court does not intend to downplay the significant judicial burden associated
discovery applications and other pretrial matters. Plaintiffs have represented, however,
during the pendency of the "multiple cases involving the Compound Patents in Delaware,
Delaware Court has never ruled on any issues regarding the merits ... was never presented
any issues of claim construction ... [and] has not ruled on any discovery disputes ... [or] h
any hearings . . . other than scheduling conferences and the telephonic conference discus
previously." (Pl. Br., ECF No. 20, at 19-20). This is especially significant considering that,
January 2014, when the Delaware Actions were consolidated for a joint trial beginning
following year, Bayer's claims against Watson were scheduled for trial beginning just
months later, in March 2014. (Docket Sheet for Delaware Watson Action, Decl. of Thomas
Fletcher, Ex. 10, ECF No. 20-5, at 56,). Indeed, in arguing against an adjournment of that
Plaintiffs argued that the case was already "ready for trial." (Pl. Br., ECF No. 20, at 7). Inher
in that statement is the representation that discovery was complete and that no pre-trial disp
remained outstanding. Based on Plaintiffs' representations, it therefore appears that the bul
the judicial workload associated with these cases flows from the trial itself and rela:
proceedings.
18

ld
d
o
S.
1,
t

have to conduct one or more additional trials. That second set of trials would not be necess
the matters were resolved in Delaware. The burden imposed on this District's judicial resour s
should these matters remain pending here thus exceeds the added burden that the District f
Delaware would face by incorporating these cases into the consolidated trial it has alr
scheduled in the Compound Patent matters. The Court therefore finds that this factor weighs n
favor of transfer.

D.

Local Interests I Public Policies of the Fora

Neither this District nor the District of Delaware has a strong "local interest" in th e
matters.

Likewise, no District-specific public policies are implicated here. 11

t

infringement lawsuits are matters of national concern that are not 'local controversies,' nor o
they implicate the public policies of any one forum."

COA Network Inc. v. J2 Glo al

Communs .• Inc., No 09-6505 (WJM), 2010 U.S. Dist. LEXIS 60116, *12 (D.N.J. June 17, 201 );
accord ML Design Group, LLC v. Young Mfg. Co., No. 12-5883 (MAS), 2013 U.S. Dist. LE
84393, *10-11 (D.N.J. June 17, 2013); Intellectual Ventures I LLC v. Altera Corp., 842 F. Su
2d 744, 760 (D. Del. 2012) ("In patent litigation, the local interest factor is typically neu
'because patent issues do not give rise to a local controversy or implicate local interests. ')

11

Plaintiffs argue that this District's relevant "public policy" is embodied in the Local Pat t
Rules applicable to ANDA cases. (Pl. Br., ECF No. 20, at 21) ("The New Jersey Local Pat t
Rules thus provide a mechanism to facilitate the orderly resolution of ANDA cases at
Delaware does not provide.") Local Rules are standing orders that each District adopts "
govern the practice and procedure of litigation in that district"', Planned Parenthood v. AG,
F.3d 253, 260 (3d Cir. 2002) (quoting Johnson v. Lafayette Fire Fighters Ass'n Local 472, 1
F.3d 726, 729 (7th Cir. 1995)), and are not, in themselves, public policies. In any event, while ts
local rules may not be identical, the District of Delaware obviously has the same underl · g
interest in promoting orderly litigation. See, M,., Bryer v. Jefferson, No. 2013 U.S. Dist. LE S
101146, *7 (D. Del. July 8, 2013) (Sleet, J.) ("The court has an interest in the efficient resoluf n
of its cases."); Trader v. Fiat Distributors, Inc., No. 76-249, 1981 U.S. Dist. LEXIS 17802, * 2
(D. Del. Jan. 16, 1981) (noting that litigants' violations of local rules jeopardize "orderly d
informed court procedures).
19

(internal citations omitted). While the Court recognizes that, "if there are significant connecti

s

between a particular venue and the events that gave rise to a suit, this factor should be wei
in that venue's favor," In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009),

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Court has already found that the evidence of record does not establish any such "signific t
connections." These factors are therefore neutral to the Court's analysis.

E.

Judges' Familiarity With Applicable State Law

Plaintiffs' claims arise solely under federal law and, therefore, this factor is neutral to

e

Court's transfer analysis. In re TS Tech United States Cotp., 551 F.3d 1315, 1320 (Fed.
2008) ('"[p]atent claims are governed by federal law,' and as such 'both [courts are] capable f
applying patent law to infringement claims.'") (brackets in original) (internal citation omitted)
iii.

The Jumara Factors Weigh in Favor of Transfer

With the exception of Plaintiffs' choice of forum, most of the Jumara factors are ei er
neutral or have a fairly minimal impact on the transfer analysis. However, the relevant practi al
consideration of having a single trial before a jurist who is already somewhat familiar with b th
the products in question and the relevant issues weighs overwhelmingly in favor of trans
This Court therefore finds that transfer is appropriate under 28 U.S.C. § 1404(a).

III.

CONCLUSION
For the foregoing reasons, Defendants' Motions to Transfer, (ECF No. 10 in Civil Act n

No. 14-1084 and ECF No. 9 in Civil Action No. 14-2065 ), are GRANTED, and these matt rs
shall both be transferred to the United States District Court for the District of Delaware.

cc:

Hon. Jose L. Linares, U.S.D.J.
20