BOEHRINGER INGELHEIM PHARMA GMBH & CO. KG et al v. TEVA PHARMACEUTICALS USA, INC. et al

Filing 76

MEMORANDUM OPINION filed. Signed by Judge Mary L. Cooper on 7/16/2015. (eaj)

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
:
BOEHRINGER INGELHEIM PHARMA :
GMBH & CO. KG, et al.,
:
:
Plaintiffs,
:
:
v.
:
:
TEVA PHARMACEUTICALS USA,
:
INC., et al.,
:
:
Defendants.
:
__________________________________ :

CIVIL ACTION NO. 14-7811 (MLC)
MEMORANDUM OPINION

BOEHRINGER INGELHEIM PHARMA GMBH & CO. KG, Boehringer Ingelheim
International GmbH, and Boehringer Ingelheim Pharmaceuticals, Inc. (collectively “Boehringer”)
brought this action – an Abbreviated New Drug Application case – on December 15, 2014 against
defendants, Teva Pharmaceuticals USA, Inc., Teva Pharmaceutical Industries, Ltd., Alkem
Laboratories, Ltd., and Mylan Pharmaceuticals Inc. (collectively “defendants”). (See dkt. 1.)
Boehringer alleges that defendants infringed U.S. Patent No. 6,087,380 (“the ‘380 Patent”)
pursuant to 35 U.S.C. § 271(e)(2)(A) and will infringe the ‘380 Patent pursuant to 35 U.S.C. §
271(a), (b), and (c). (Id.) The Court assumes that the parties are familiar with the nature and
history of this litigation and will not recite those details here.
MYLAN PHARMACEUTICALS INC. (“Mylan”) alleges that this Court lacks personal
jurisdiction over it and accordingly moved to dismiss the complaint, insofar as it asserts claims
against Mylan, pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal
jurisdiction. (See dkt. 36.) Mylan asserts that it lacks any claim-related or jurisdiction-conferring

contacts to New Jersey. (See dkt. 37 at 5.) Mylan concedes that it complies with New Jersey’s
foreign corporation licensing and registration statute, N.J.S.A. 14A: 4–1(1), namely that it is
registered to do business in New Jersey and it appointed an in-state agent for service of process.
(See dkt. 37 at 10.) Mylan alleges, however, that this alone cannot serve as a basis for personal
jurisdiction. (Id.)
BOEHRINGER argues that: (1) Mylan’s compliance with New Jersey’s statutory
requirements constitutes consent to this Court’s jurisdiction; (2) Mylan purposefully directed its
pharmaceutical business activities toward New Jersey and purposefully availed itself of the
jurisdiction of this Court in the past; and (3) Boehringer’s declaratory judgment and infringement
claims arise out of, or relate to, Mylan’s activities in New Jersey. (See dkt. 46 at 15–35.)
THE PRIMARY ISSUES BEFORE THIS COURT in regard to Mylan’s motion are
whether: (1) the record demonstrates that Mylan’s contacts with this forum render it “at home” in
the State of New Jersey; (2) Mylan’s registration to do business in New Jersey and appointment of
an in-state agent for service of process amount to consent to this Court’s jurisdiction; and (3) in
conducting its pharmaceutical business nationwide, Mylan purposefully availed itself of New
Jersey law and purposefully directed its business activities toward the state.
BASED ON PRIOR DECISIONS OF THIS COURT – decisions that involved Mylan
in nearly an identical posture – this Court need not reach the first or third issue. This Court instead
relies on the opinion issued by Chief Judge Jerome Simandle in the case, Otsuka Pharm. Co., Ltd.
v. Mylan Inc., No. 14-4508, 2015 WL 1305764 (D.N.J. Mar. 23, 2015), to deny the motion based
on consent to jurisdiction.

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IN OTSUKA, Mylan chose to answer in the same way it did in this case: by moving to
dismiss the complaint for lack of personal jurisdiction. Id. at *1. In considering the motion, the
Court held that Daimler AG v. Bauman, 134 S.Ct. 746 (2014), “fundamentally altered the general
jurisdiction analysis”. Id. at *5. The Court, however, declined to decide whether Mylan was “at
home” in the New Jersey forum – the standard for finding general jurisdiction – because the Court
held that “Mylan Pharma consented to this Court’s jurisdiction”. Id. at *8; see also Goodyear
Dunlop Tires Operations, S.A. v. Brown, 131 S.Ct. 2846, 2851 (2011).
MYLAN had asserted, among other similar arguments to the ones advanced here, that its
adherence to New Jersey’s registration requirements and its appointment of an in-state agent for
service of process did not confer general jurisdiction or consent jurisdiction. Id. at *1. The Otsuka
court disagreed, stating that “it cannot be genuinely disputed that consent, whether by registration
or otherwise, remains a valid basis for personal jurisdiction” even after Daimler. Id. at *9. The
Court explained its conclusion through precedent, stating that “the Supreme Court has specifically
concluded, on two separate occasions, that a corporation’s appointment of an agent for service of
process constitutes, under certain circumstances, consent to the forum’s personal jurisdiction.” Id.
(referencing Pa. Fire Ins. Co. of Phila. v. Gold Issue Mining & Milling Co., 243 U.S. 93, 95
(1917) and Neirbo Co. v. Bethlehem Shipbuilding Corp., 308 U.S. 165 (1939)). Thus, “these
precedents provide clear confirmation that designation of an in-state agent for service of process in
accordance with a state registration statute may constitute consent to personal jurisdiction, if
supported by the breadth of the statute’s text or interpretation.” Otsuka, 2015 WL 1305764, at *11.
THE STATE OF NEW JERSEY’S REGISTRATION STATUTE requires that “every
foreign corporation authorized to transact business [in the State of New Jersey] shall continuously
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maintain a registered office . . . and a registered agent having a business office identical with such
registered office.” N.J.S.A. 14A: 4–1(1). Further, the statute provides that “[e]very registered
agent shall be an agent of the corporation which has appointed him, upon whom process against
the corporation may be served.” N.J.S.A. 14A: 4–2(1).
MYLAN conceded that they complied with the New Jersey registration requirements,
including maintenance of a registered agent in the State for purposes of service of process. (See
dkt. 37 at 10.) Otsuka, 2015 WL 1305764, at *11. Thus, the Otsuka court held that Mylan
“consented to the Court’s jurisdiction by registering to do business in New Jersey, by appointing
an in-state agent for service of process in New Jersey, and by actually engaging in a substantial
amount of business in this State.” Otsuka, 2015 WL 1305764, at *12 (noting that Mylan is
“licensed to do business in this jurisdiction, maintain[s] [a] registered agent[] in this jurisdiction,
and generate[s] very sizeable revenues from sales in this jurisdiction”).
THIS COURT finds the reasoning of Otsuka to directly inform the outcome of this motion
because all of the facts found by the Otsuka court still apply to Mylan in this matter. As a result,
the Court holds that Mylan consented to personal jurisdiction by complying with the State of New
Jersey’s registration requirements and appointing an in-state agent to accept service of process.
Thus, Mylan’s motion to dismiss for lack of personal jurisdiction is denied.
FOR GOOD CAUSE APPEARING, this Court will issue an appropriate order.
s/ Mary L. Cooper
MARY L. COOPER
United States District Judge
Dated: July 16, 2015

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