INDIVIOR INC. et al v. DR. REDDY'S LABORATORIES S.A. et al

Filing 167

OPINION; etc. Signed by Judge Kevin McNulty on 08/27/2018. (sms)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

INDWIOR INC. and INDWIOR UK
LTD.,
Plaintiffs,

Civ. No. 17-7106 (KM)(CLW)

VS.

Civ. No. 17-7111 (KM)(CLW)
Civ. No. 17-7115 (KM)(CLW)

DR. REDDY’S LABORATORIES S.A.,
and DR. REDDY’S LABORATORIES,
INC.,

OPINION

Defendants.

INDWIOR INC. and INDWIOR UK
LTD.,
Plaintiffs,
Vs.
TEVA PHARMACEUTICALS USA,
INC.
Defendant.
INDWIOR INC. and INDWIOR UK
LTD.,
Plaintiffs,
Vs.
ALVOGEN PINE BROOK, INC.,

Defendant.

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KEVIN MCNULTY, U.S.D.J.:
Now before the Court is the Report and Recommendation (“R&R”) (ECF
no. 50, Civ. No. 17-7106; ECFno. 50, Civ. No. 17-7115; ECFno. 118, Civ. No.
17-7111) of Magistrate Judge Cathy L. Waldor. Judge Waldor recommends that
I deny the motions of defendants, Dr. Reddy’s Laboratories S.A. and Dr.
Reddy’s Laboratories, Inc. (collectively, “DRL”), Teva Pharmaceuticals USA, Inc.
(“Teva”), and Alvogen Pine Brook, Inc. (“Alvogen”) (collectively, “Defendants”) to
transfer venue of this case to the District of Delaware under 28 U.S.C.

§

1404(a).1 For the reasons set forth below, the R&R is adopted and affirmed as
to these defendants, and their motions to transfer are denied.
I.

BACKGROUND and DISCUSSION

As to a Magistrate Judge’s order regarding a non-dispositive matter, the
district court “must consider timely objections and modify or set aside any part
of the order that is clearly erroneous or contrary to law.” Equal Emp’t
Opportunity Comm’n u. City of Long Branch, 866 F.3d 93, 99 (3d Cir. 2017)
(quoting Cont’l Gas. Co. v. Dominick D’Andrea, Inc., 150 F.3d 245, 250 (3d Cir.
1998); 28 U.S.C.

§

636(b)(1)(A)). The district court will review findings of fact for

clear error and to review matters of law de novo. Id.
As to a dispositive matter referred to the Magistrate Judge for decision,
however, the district court’s review is plenary:
The product of a magistrate judge, following a refenai of a
dispositive matter, is often called a “report and recommendation.”
Both Teva and Alvogen initially filed separate motions to transfer in their
respective cases. (ECFno. 12, Civ. No. 17-1706; ECFno. 8, Civ. No. 17-7115.) In her
R&R regarding Teva and Alvogen’s motions to transfer, Judge Waldor noted that “[t]he
facts of thfese] casels] are virtually identical to those in Indivior, et al. iS’. Dr. Reddy’s
Laboratories, S.A. et aL, No. 2: 17-cv-71 1 1-KM-CLW” and thus incorporated the R&R
for DRL’s motion into her R&R for the other motions. (ECF no. 50, Civ. No. 17-7 106;
ECF no. 50, Civ. No. 17-7115.) Judge Waldor did note some distinctions among the
defendants: Teva was incorporated in Delaware and had a principal place of business
in North Wales, PA, whereas Alvogen was incorporated in Delaware and had a
principal place of business in New Jersey. (Id.) (ECF no. 54, 17-7106; ECF no. 161,
Civ. No. 17-7111; ECF no. 52, Civ. No. 17-7115.) However, because the objections are
the same, I will issue this one opinion as to all three motions.
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Parties “may serve and file specific written objections to the
proposed findings and recommendations” within 14 days of being
served with a copy of the magistrate judge’s report and
recommendation. Fed. I?. Civ. P. 72(b)(2). If a party objects timely
to a magistrate judge’s report and recommendation, the district
court must “make a de novo determination of those portions of the
report or specified proposed findings or recommendations to which
objection is made.” 28 U.S.C. § 636(b)(1); see also Fed. R. Civ. P.
72(b)(3J.
EEOC v. City of Long Branch, 866 F.3d at 99—100.
Some decisions in this District have treated Magistrate Judges’ decisions
on motions to transfer venue as non-dispositive. See Allyn Z. Lite, N.J. Fed.
Prac. R. Loc. I?. 72.la, comment 3, at p. 419 (2018 ed.) (citing, e.g., Siemens
Financial Services v. Open Advantage, 2008 U.S. Dist. LEXIS 15623 (D.N.J.
Feb. 29, 2008) (Hayden, I)). Others have treated them as dispositive. See Cuco
v. United States, 2007 WL 2904193 (Oct. 2, 2007) (Chesler, J.) (treating motion
to transfer as dispositive and reviewing R&R de novo); Oliver v. Third Wave
Technologies, 2007 U.S. Dist. LEXIS 70915 (D.N.J. Sept. 24, 2007) (Linares, J.).
As to this issue, there has been no definitive holding by the U.S. Court of
Appeals for the Third Circuit. But cf In re U.S. Healthcare, 159 F.3d 142, 145
(3d Cir. 1998) (Magistrate Judge order remanding case to state court is
dispositive).
This particular matter presents itself in the form of a report and
recommendation, implying and signaling to the parties that it has been treated
as a dispositive ruling. Therefore, in an abundance of caution, I will treat it as
such, and review it de novo.
In the end, however, the standard of review makes little difference,
because I find myself in agreement with Judge Waldor’s well-reasoned R&R.
Having exercised de novo review, I adopt and affirm the R&R, adding some
procedural history, a summary of the R&R, and a few additional observations
that address the objections made by defendants.

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The only update of note to the procedural history is my disposition of the
motion of Indivior Inc., Indivior UK Limited, and Aquestive Therapeutics, Inc.
(collectively, “Plaintiffs”) for a preliminary injunction against DRL. On July 13,
2018, after a hearing on the issue, I granted the motion for a preliminary
injunction, barring DRL from manufacturing, importing, or selling a generic
version of Suboxone in the United States. (ECF nos. 122, 136, Civ. No. 177111.) DRL has appealed this preliminary injunction to the U.S. Court of
Appeals for the Federal Circuit; that appeal is pending (Indivior Inc. v. Dr.
Reddy’s Laboratories, LA., 18-2167). (ECFnos. 137, isg, Civ. No. 17-7111.)
Plaintiffs’ essential claim is that Alvogen, Teva, and DRL are
manufacturing, marketing, and selling a generic product that infringes the
patents at issue. They argue that the District of New Jersey is the proper venue
for these patent infringement cases. Alvogen, Teva, and DRL moved to transfer
venue to the District of Delaware under 28 U.S.C.

§

1404(a). There is a history

of litigation over plaintiffs’ patents for sublingual films in front of District Judge
Richard G, Andrews in the District of Delaware. In 2014, plaintiffs pursued
several patent infringement actions against DRL (as well as other defendants
not parties to this case) in the District of Delaware, alleging similar
infringement. The patents at issue in Delaware were similar to, and one is a
parent patent to, the patents at issue in this case. Judge Andrews made two
rulings in favor of DRL: the first on collateral estoppel grounds and the second
on the grounds that the patent was valid but that DRL did not infringe it.
Judge Waldor recommended denying the motions to transfer venue.
(R&R at 16.)
First, she found that venue is pennissible as to DRL in the District of
New Jersey under the patent venue statute, 28 U.S.C.

§

1404(b), which states

that a “civil action for patent infringement may be brought in the judicial
district where the defendant resides, or where the defendant has committed
acts of infringement and has a regular and established place of business.” (Id.
at 7.) The Supreme Court has explained that, for patent cases, a domestic
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corporation “resides” only in its state of incorporation and where it has a
regular and established place of business. TC Heartland LLC v. Kraft Food Grp.
Brands LLC, 137 5. Ct. 1514, 1517 (2017). Judge Waldor found, and the
parties did not dispute, that DRL was incorporated in New Jersey and that
venue was therefore in accordance with

§

1404(b) and TC Headland.

Second, Judge Waldor considered whether plaintiffs had consented to
venue in the District of Delaware. As to that issue, she determined that DRL
had failed to meet its burden of proof. (R&R at 9.) To begin with, she noted, the
action may be transferred only if the plaintiff could have brought the action in
the transferee district as of the time of the action’s commencement. (Id. at 8
(citing Hoffman v. Blaski, 363 U.S. 335, 344 (1960); Ragner Tech. Corp. v.
Berardi, 287 F. Supp. 2d 541, 547 (D.N.J. 2018).) DRL states that it did not
meet the requirements of 1404(b) for the purposes of establishing residency
in Delaware. (Id.) And although DRL had previously consented to jurisdiction in
the Delaware cases, “consent is specific to one action and does not extend to
other cases.” (Id. at 8—9.)
Third, Judge Waldor directly addressed the appropriateness of transfer
under

§

1404(a), balancing the factors laid out in Jumara v. State Farm Ins., 55

F.3d 873 (3d Cir. 1995). She held that the Jumara factors did not weigh in
favor of granting a discretionary transfer. (Id. at 11.) Considering the proximity
of the two forums, she did not find that it would be more efficient and
convenient for the parties to litigate in Delaware, rather than New Jersey. (Id.)
Additionally, she found that both districts faced busy dockets and that a
transfer would not reduce court congestion. (Id.) She also explained that
whether the transferee court has presided over prior similar suits with respect
to the same patent did not control the transfer analysis. But even so, she
found, this Court had already become quite familiar with the patents at issue,
particularly in light of the proceedings that resulted in the grant of the
preliminary injunction. (Id. at 12.) She also found that New Jersey is at least as
convenient, if not more so, than Delaware, and that a foreign plaintiff should
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be given deference when it elects to bring a case in defendant’s home forum, as
plaintiffs did here. (Id. at 12—13 (citing Tech. Dev. Co. v. Onischenko, 536 F.
Supp. 2d 511, 518, 520 (D.N.J. 2007).)
Finally, Judge Waldor held that the first-filed rule, which permits a court
to transfer a case to the district where a suit involving the same parties and
issues where that case was first filed, did not apply. (Id. at 14—15.) While the
New Jersey and Delaware actions were similar and overlapping in some
respects, there was not such an identity of actions that the first-filed rule
should control. (Id. at 15.) Different patents, containing additional, different, or
missing claim language or limitations were at issue in the New Jersey cases.
(Id. at 15—16.) Further, she noted that the danger of conflicting decisions was
mitigated because all patent cases are subject to appeals to the same court—
the U.S. Court of Appeals for the Federal Circuit. (Id. at 16.)
The defendants object to Judge Waldor’s R&R on several grounds. First,
they argue that even if venue as to DRL would not otherwise be appropriate in
Delaware, DRL consented to venue in connection with the previous Delaware
case. (ECF no. 161, 17-7111, at 5 [hereinafter, “Obj.”J.) That consent, they
argue, carries over to the current cases, and Judge Waldor was wrong to
conclude otherwise. They also point to several actions by DRL that imply a
willingness to concede venue in Delaware.2
I disagree. I find that Judge Waldor correctly analyzed the issue of the
permissibility of venue in the District of Delaware. That analysis focuses on the
5473 At the time
time “when a suit is commenced.” Ragner, 287 F. Supp. 2d at
“Among those acts: (1) when DRL acquired its Suboxone ANDAs from Teva, it
adopted Teva’s agreement to not contest venue in Delaware; (2) DRL engaged in
extensive discovery, motions practice, and even trial, all in Delaware; and (3) DRL
affirmatively adopted counterclaims that is Suboxone ANDAs would not infringe any of
Indivior’s Orange Book patents and that those patents were invalid.” (Obj. at 6.)
See also Hoffman, 363 U.S. at 344 (“If when a suit is commenced, plaintiff has a
right to sue in that district, independently of the wishes of defendant, it is a district
‘where [the action) might have been brought.’ If he does not have that right,
independently of the wishes of defendant, it is not a district ‘where it might have been
brought,’ and it is immaterial that the defendant subsequently [makes himself subject,
2

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this action was commenced, DRL did not reside in Delaware and there was no
guarantee that DRL would consent to venue there. The extrinsic acts cited by
Teva and DRL, see n. 4, supra, related to the Delaware action and the patent
issues in suit there, but they did not constitute a clear manifestation of
consent to lay venue of this case in Delaware as of the time it was filed.
Second, defendants object to Judge Waldor’s balancing of the Jumara
factors. (Obj. at 7.) They cite “overwhelming” authority that calls for a transfer
where the transferee court has considerable prior experience with the same
parties, the same technolor, the same subject matter of the asserted patents,
and the same accused formulations (Id. at 8 (citing, e.g., Lifecell Corp. v. Lifenet
Health, 15-6701, 2016 WL 3545752, at *4 (D.N.J. June 8, 2016)). They
therefore take issue with Judge Waldor’s conclusion that Judge Andrews’s
familiarity with the case “has no bearing on the transfer analysis.” (Id.) On the
point of judicial economy, they point to what they believe are conflicting
decisions of Judge Andrews and this Court. (Id. at 9.)
Again, I disagree. Judge Waldor weighed the Jumara factors correctly and
came to an appropriate conclusion. Defendants, I believe, overread Judge
Waldor’s statement about the relevance of Judge Andrews’s familiarity with the
previous patents and the prior proceedings. Judge Andrews, by virtue of ably
presiding over the previous case, surely gained relevant expertise. Still, he
should not be deemed to have superior familiarity with the issues raised in
this, non-identical case. (R&R at 12.) My decision on the preliminary
injunction, for example was not a new judge’s inconsistent resolution of the
same question already decided by Judge Andrews; to the contrary, I rejected
resjudicata arguments and held that the revised claims of the ‘305 patent
distinguished it from the patent that Judge Andrews analyzed. As to this
discretionary venue issue, then, I do not find the cited authority to be
“overwhelming.” Because the issues in the cases are sufficiently distinct, and
by consent, waiver of venue and personal jurisdiction defenses or otherwise, to the
jurisdiction of some other forum].”).
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for the reasons expressed by Judge Waldor, the Jumara factors do not compel
transfer to Delaware.
Finally, Teva and DRL object to Judge Waldor’s conclusions regarding
the first-filed rule. (Obj. at 10.) Here, their arguments are similar to those they
made regarding the Jumara factors: “The parties are the same. The products
are the same. The patent specifications are the same. The issues are the same.”
(Obj. at 11.) Crucially, however, the patents and patent issues here are not
identical to the ones litigated before Judge Andrews. In my ruling, I held that
the language of the ‘305 Patent and the ‘514 Patent were sufficiently distinct to
require a different result, at least for purposes of a preliminary injunction: “The
‘305 patent and its claim contain different language [from the ‘514 patent] and
that language requires its own distinct construction.” (ECF. no. 142, 17-7111,
at 18.) Judge Waldor did not err in determining that “there [was] not sufficient
overlap for the [first-filed] rule to control.” (R&R at 15—16.)
U.

CONCLUSION

For the reasons stated by Judge Waldor, supplemented by the reasons in
this opinion, the R&R (ECF no. 50, Civ. No. 17-7106; ECF no. 50, Civ. No. 177115; ECF no. 118, Civ. No. 17-7111) is adopted and affirmed, and the
objections of Alvogen, Teva, and DRL (ECF no. 52, Civ No. 17-7106; ECF no.
161, Civ. No. 17-7111; ECF no. 54, Civ. No. 17-7115) are rejected. The motions
to transfer venue (ECF no. 16, Civ No. 17-7106; ECF no. 12, Civ. No. 17-7111;
ECF no. 8, Civ. No. 17-7115) are denied. An appropriate order accompanies
this opinion.
Dated: August 27, 2018

KEVIN MCNULTY
United States District Judge

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