Cadence Pharmaceuticals, Inc. et al v. Multisorb Technologies, Inc.

Filing 20

-CLERK TO FOLLOW UP-ORDER OF MAGISTRATE JUDGE HUGH B. SCOTTORDER granting 2 Motion; deferring ruling on 1 Motion to Compel; deferring ruling on 3 Motion to Seal Document; deferring ruling on 12 Mot ion to Quash; denying 19 Motion for Leave to FilePetitioners' Motion (Docket No. 2) to transfer this proceeding to the District of Delaware is granted. Court Clerk is instructed to transfer file of this proceeding, including original of documents parties sought filed under seal (see Docket No. 3) available in Chambers of undersigned, to the District of Delaware.Respondent's Motion (Docket No. 19) for leave to file sur-reply is denied.This Court defers action on remaining pending motions (Docket Nos. 1, 3, 12).So Ordered. Signed by Hon. Hugh B. Scott on 8/15/2016. (DRH)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK

CADENCE PHARMACEUTICALS, INC. et al.,
Petitioners,
Hon. Hugh B. Scott
16MC22G
v.
Order

MULTISORB TECHNOLOGIES, INC.,
Respondent.

Before this Court is petitioners’ motion to transfer their pending miscellaneous action to
the District of Delaware (Docket No. 2). Also pending therein are petitioners’ motion to compel
compliance with the subpoena they issued in an action pending in the District of Delaware
(Docket No. 1); motion to file certain papers for that motion under seal (Docket No. 3);
respondent’s cross-motion to quash the subpoena (Docket No. 12).
Chief Judge Frank Geraci referred this miscellaneous proceeding to the undersigned
(Docket No. 13) and this Court determined to hear first the motion to transfer and, if that motion
was denied, then the motion to seal the motion to compel compliance with the subpoena, and the
crossing motions regarding the subpoena (Docket No. 14). Petitioners’ reply to their motion to
transfer was due August 8, 2016 (id.) and petitioners filed their response under seal (Docket
No. 16, motion to seal; Petrs.’ Reply Memo. (filed under seal); see Docket No. 18, Order sealing
reply). Respondent then moved for leave to file a sur-reply (Docket No. 19) to counter certain
misstatements of fact by Petitioners; leave □□to file is denied.

BACKGROUND
This arises from an action proceeding in the United States District Court for the District
of Delaware, Candence Pharmaceuticals, Inc., et al. v. InnoPharma Licensing LLC et al., Case
No. 14-cv-01225 LPS (D. Del.) (hereinafter “the Delaware case” or, under Rule 45(f) the
“issuing court” or “Cadence” when cited). Petitioners Candence Pharmaceuticals, SCR
Pharmatop, and Mallinckrodt IP (collectively “Petitioners”) are plaintiffs in the Delaware case,
which is a patent infringement action commenced in September 2014 (Docket No. 2, Petrs.
Memo. at 2). The District Judge in the Delaware case previously presided over patent litigation
involving the patents at issue in that case (id.).
Fact discovery was scheduled to be completed in the Delaware case by May 6, 2016, with
expert discovery closing on August 16, 2016, but in February 2016 the defendant InnoPharma
Licensing LLC asserted a non-infringement defense for the first time implicating claims on one
of the patents (id.). The Delaware court thus extended the discovery deadlines (id. at 2-3) to
September 2, 2016 (Petrs’ Reply Memo. at 3 (filed under seal), citing to Cadence, supra, Case
No. 14-cv-01225-LPS, Docket No. 187, Oral Order of May 9, 2016 (D. Del.)). But according to
the docket sheet for the Delaware case, the May 9, 2016, Oral Order reset the trial date (from
November 7, 2016, to January 9, 2017) and a pretrial conference date (from October 28, 2016, to
December 22, 2016), and ordered the parties to “submit a revised proposed scheduling order in a
timely manner, as directed by the Court at the hearing today,” without stating the discovery
deadline, Cadence, Case No. 14-cv-01225-LPS, Docket No. 187. On July 14, 2016, the
Delaware court so ordered the parties’ stipulation to amend the scheduling order, id. Docket
Nos. 219 (so ordered stipulation), 218 (stipulation), which set the discovery deadline for
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September 2, 2016, id., Docket No. 219. This Court also notes that the Delaware court later reset
the trial date for January 23, 2017, id., Docket Nos. 209, Order of July 1, 2016, 219, Stipulated
Order, and that the court held a discovery teleconference on August 4, 2016, id., Text Minute
Entry Aug. 4, 2016; see id. Docket No. 210, but the docket does not reveal whether the discovery
deadline was affected by that session.
Petitioners served subpoena ad testificandum and subpoena duces tecum upon
Respondent Multisorb Technologies (“Respondent”) (Docket No. 2, Petrs.’ Atty. Decl. ¶ 3,
Ex. 1) as part of Petitioners’ investigation of defendant’s manufacturing process, including the
use of Respondent’s Freshpax oxygen scavenger and whether it infringes on one of the patents
(Docket No. 2, Petrs. Memo. at 3). The subpoenas sought to examine the authenticity of
Respondent’s “published or publicly-available documents concerning the ability of Freshpax to
scavenge oxygen from a packaging system” (Docket No. 2, Petrs.’ Atty. Decl., Ex. 1, at 2;
Docket No. 2, Petrs. Memo. at 3). The subpoena sought documents concerning the ability of
Freshpax to extract oxygen from the contents of a package; communication between Respondent
and InnoPharma about Freshpax and/or other Respondent’s products; and documents of
InnoPharma’s actual and/or proposed use of Freshpax or other Respondent’s products (Docket
No. 2, Petrs. Memo. at 3). The subpoena originally was returnable on May 26, 2016, in
Cheektowaga, New York (Docket No. 2, Petrs.’ Atty. Decl., Ex. 1, Ex. 1. Respondent objected
to the subpoenas on May 31, 2016, after the parties met and conferred on three occasions
(Docket No. 2, Petrs.’ Atty. Decl. ¶ 4, Ex. 2; Docket No. 2, Petrs. Memo. at 3).
In the objections to the duces tecum subpoena, Respondent objected to the lack of
particularity of the demands, the relevance to the Delaware case, that the subpoena requires
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disclosure of confidential and proprietary trade secrets (Docket No. 2, Petrs.’ Atty. Decl. Ex. 2;
cf. id., Ex. 1, including stipulation and confidentiality agreement), with Respondent declaring its
willingness to produce non-privileged material at a mutually convenient date (Docket No. 2,
Petrs.’ Atty. Decl. Ex. 2)
Petitioners commenced this miscellaneous case in this Court (under Rule 45(f) the
“compliance Court”) and have moved to compel nonparty Respondent to comply with a
subpoena ad testificandum and subpoena duces tecum (Docket No. 2, Petrs.’ Notice of Motion).
Petitioners now move to transfer this subpoena proceeding to the District of Delaware, arguing
that exceptional circumstances exist to grant the transfer and the burden of such a transfer is
minimal upon Respondent (id.; Docket No. 2, Petrs. Memo. at 3-5, 5-6). As for exceptional
circumstances, Petitioners contend that judicial economy favors transfer to the District of
Delaware because the extended discovery will close in two months (Docket No. 2, Petrs. Memo.
at 4), the Delaware case has been pending for two years, and discovery orders were already
issued in the case (id. at 4-5). They point to the Delaware court’s familiarity with the patent
issues in the Delaware case from entering orders on the validity of the Patents-in-Suit in the
earlier case following a bench trial (id. at 5). They contend that transfer to Delaware would
allow that court to better manage the Delaware case given the short amount of time remaining for
discovery and to avoid the potential for inconsistent outcomes on discovery disputes (id.).
Petitioners also contend that the burden of a transfer to Delaware would be minimal to
Respondent, a western New York, international corporation (id. at 5-6), see Judicial Watch, Inc.
v. Valle Del Sol, Inc., 307 F.R.D. 30, 34-35 (D.D.C. 2014), that has defended patent litigations in
other districts (id. at 6).
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Respondent argues that Petitioners have not established that exceptional circumstances
exist for transfer of this proceeding to Delaware (Docket No. 10, Resp’t Memo. at 1).
Respondent supplies oxygen to all parties in the Delaware case (id.). Respondent points to the
avoidance of burdens upon it as the nonparty subject to the subpoenas and that it should not be
assumed that the issuing court (the District of Delaware) is in a better position to resolve
subpoena-related issues (id., quoting Fed. R. Civ. P. 45(f), advisory committee notes to 2013
amendment). The three contentions made by Petitioners claimed to be exceptional
circumstances while Respondent concludes are not (id. at 2). As for Petitioners’ first argument
(that the issuing court is more familiar with the case because the case has been pending for two
years), Respondent contends that in all Rule 45(f) cases the issuing court is more familiar with
the underlying issues than the compliance court, hence it “is commonplace, not exceptional” (id.,
citing Lima LS PLC v. Nassau Reins. Grp. Holdings, L.P., No. 15 Misc. 359, 2015 U.S. Dist.
LEXIS 171931, at *11 (S.D.N.Y. Dec. 18, 2015)). As for Petitioners’ second argument (that the
issuing court had the patent issues before it in a prior action), Respondent dismisses the
importance of that prior action because it involved another defendant and that the issuing court
there only decided the validity of the patents, and Petitioners fail to state how this impacts on the
court’s ability to decide a motion to compel in the present case (id. at 2-3). As for the third
argument (that the issuing court has already issued discovery orders), Respondent finds that fact
not to be exceptional and that Petitioners do not explain how those discovery orders relate to
compelling Respondent to respond to the subpoena (id. at 3). The February 5, 2016, proceeding
before United States District Judge Stark in the District of Delaware was a discovery
teleconference and the issues surrounding Respondent’s subpoena were not addressed (id.).

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Thus, Respondent concludes that the chance for inconsistent outcomes between this Court and
the District of Delaware is slight because the issuing court here has not ruled on issues in the
motion to compel (id. at 3-4; see id. at 8 (Petitioners do not indicate any previous rulings from
the District of Delaware on the issues in the motion to compel or quash)). Respondent points out
that Petitioners have not met their burden either in pointing out where the issuing court has
considered the motion to compel issues in this case or how the rulings of this Court “could
disrupt management of the Delaware litigation, or any issues that are pending or likely to arise in
multiple districts” (id. at 4, 5).
Respondent argues that the focus under Rule 45(f) should be on not burdening the nonparty served with the subpoena (id. at 5, quoting Federal Home Loan Mortg. Corp. v. Deloitte &
Touche LLP, 309 F.R.D. 41, 42 (D.D.C. 2015) (quoting, in turn, Fed. R. Civ. P. 45(f) advisory
committee’s note to 2013 amendment). Respondent emphasizes the burdens it faces if this
proceeding was transferred—the necessity to retain local counsel in Delaware, travel there for
proceedings, while all documents and Respondent’s employees and potential witnesses are in
this District (id. at 6-7). At the time of the response, the discovery deadline in the Delaware case
was two months away, far longer than the deadlines in cases cited by Petitioners (id. at 7,
distinguishing In re Subpoena to Kia Motors Am., Inc., No. SACV 14-315 JLS (RNBx), 2014
U.S. Dist. LEXIS 72827, at *2 (C.D. Cal. Mar. 6, 2014)).
Petitioners reply that the issuing court needs to manage its docket and that discovery has
been scheduled to conclude on September 2, 2016 (Petrs’ Reply Memo. at 2-3 (filed under seal)).
They point to the duration of the underlying Delaware action as a factor in favor of transfer (id.
at 3-4). Defendant InnoPharma’s use of Respondent’s Freshpax oxygen scavenger “is pertinent
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to the question of infringement of the asserted claims of” one of the patents (id. at 4), hence the
relevance of the document demands in the subpoena, which Petitioners conclude is better
decided by the issuing court (id. at 4-5), including that court’s prior experience in determining
the validity of these patents in the earlier action (id. at 5-6). They claim that the issuing court has
“already ruled on numerous common issues presented by the parties’ cross-motions” (id. at 7),
leading to the potential for inconsistent decisions between the two courts (id. at 6-7). Finally,
Petitioners dispute Respondent’s claim that it would be burdened by a transfer (id. at 7-10),
arguing (among other contentions) that the mere cost of litigation is not a substantial burden (id.
at 7, citing Wultz v. Bank of China, Ltd., 304 F.R.D. 38, 45 (D.D.C. 2014)).
DISCUSSION
I.

Standards
A.

Rule 45(f) Transfer of Subpoena Proceeding

Petitioners move, pursuant to Federal Rule of Civil Procedure 45(f), to transfer this
proceeding to the District of Delaware. That rule provides
“When the court where compliance is required did not issue the subpoena, it may
transfer a motion under this rule to the issuing court if the person subject to the
subpoena consents or if the court finds exceptional circumstances. Then, if the
attorney for a person subject to a subpoena is authorized to practice in the court
where the motion was made, the attorney may file papers and appear on the
motion as an officer of the issuing court. To enforce its order, the issuing court
may transfer the order to the court where the motion was made.”
Fed. R. Civ. P. 45(f) (emphasis added).
Rule 45(f) was added in 2013 and allows either for the parties to consent to transfer of a
subpoena proceeding to the issuing court (not applicable here) or for the compliance court
hearing the motion to transfer the proceedings to the issuing court when “exceptional
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circumstances,” warrant, Fed. R. Civ. P. 45(f), advisory committee notes to 2013 amendment.
“[T]he proponent of transfer bears the burden of showing that such circumstances are present,”
id.; Orix USA Corp. v. Armentrout, No. 3:16-mc-63-N-BN, 2016 U.S. Dist. LEXIS 95104, at *9
(N.D. Tex. July 21, 2016)) (Horan, Mag. J.); Argento v. Sylvania Lighting Servs. Corp.,
No. 2:15-cv-01277-JAD-NJK, 2015 U.S. Dist. LEXIS 108818, at *9-10 (D. Nev. Aug. 15, 2015)
(Koppe, Mag. J.). Whether exceptional circumstances exist “turns on the facts of each case,”
Argento, supra, 2015 U.S. Dist. LEXIS 108818, at *9, citing Agincourt Gaming, LLC v. Zynga,
Inc., No. 2:14-CV-0708-RFB-NJK, 2014 U.S. Dist. LEXIS 114348, at *17 (D. Nev. Aug. 15,
2014) (Koppe, Mag. J.). “The court considering the transfer motion should not assume that the
issuing court is in a better position to resolve subpoena-related motions,” Argento, supra,
2015 U.S. Dist. LEXIS 108818, at *10; In re UBS Fin’l Servs., Inc. of Puerto Rico Secs. Litig.,
113 F. Supp.3d 286, 287 (D.D.C. 2015) (quoting, in turn, Judicial Watch, supra, 307 F.R.D. at
34).
The Advisory Committee commented that “the prime concern should be avoiding
burdens on local nonparties subject to subpoenas, and it should be assumed that the issuing court
is in a superior position to resolve subpoena-related motions,” Fed. R. Civ. P. 45(f), advisory
committee notes to 2013 amendment; Orix USA Corp., supra, 2016 U.S. Dist. LEXIS 95104, at
*9-10. A transfer may be warranted “in order to avoid disrupting the issuing court’s
management of the underlying litigation, as when that court has already ruled on issues presented
by the motion or the same issues are likely to arise in discovery in many districts,” Fed. R. Civ.
P. 45(f), advisory committee notes to 2013 amendment. The Committee concluded that “transfer

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is appropriate only if such interests outweigh the interests of the nonparty served with the
subpoena in obtaining local resolution of the motion,” id.
This differs from the general transfer provision found in 28 U.S.C. § 1404. Under that
statute, this Court may transfer a case to a different venue “for the convenience of the parties and
witnesses, in the interest of justice . . . where it might have been brought,” 28 U.S.C. ' 1404(a),
with the decision to transfer being within the sound discretion of the Court, Filmline (CrossCountry) Prods., Inc. v. United Artists Corp., 865 F.2d 513, 520 (2d Cir. 1989) (Docket No. 21,
Def. Memo. at 4); see generally New Era Cap Co. v. Prinz Enterp., LLC, No. 06CV391,
2008 U.S. Dist. LEXIS 15281, at *2-5 (W.D.N.Y. Feb. 28, 2008) (Scott, Mag. J.) (discussing
standard for interdistrict transfer under ' 1404(a)). To prevail on a motion for transfer, the
moving party “must demonstrate that an adequate alternative forum exists and that . . . the
balance of convenience tilts strongly in favor of trial in the foreign forum.” R. Maganlal & Co.
v. M.G. Chemical Co., 942 F.2d 164, 167 (2d Cir. 1991).
Rule 45(f) has as the norm that the compliance court (here this Court) considers whether
to compel compliance with the subpoena (alternatively to quash it on Respondent’s crossmotion) with the exceptions to have the venue changed to the issuing court either on the consent
of the parties (not applicable here) or on finding the existence of exceptional circumstances.
Factors in concluding that exceptional circumstances exist include the procedural posture of the
underlying case, the duration of its pendency, discovery deadlines in that action, and the issuing
court’s familiarity with the underlying cases (Docket No. 2, Petrs. Memo. at 4 (citing cases)), see
Parker Compound Bows, Inc. v. Hunter’s Mfg. Co., No. 5:15-mc-00035-MFU, 2015 U.S. Dist.

9

LEXIS 159750, at *3-4, 4 n.12 (N.D. Ohio Nov. 19, 2015) (quoting Judicial Watch, supra,
307 F.R.D. at 34)); see also Fed. R. Civ. P. 45(f).
B.

Motion to Transfer and Dispositive Jurisdiction for Magistrate Judge

Next, this Court considers the authority it has to consider this proceeding, whether it is
dispositive or non-dispositive. While courts dispute whether a motion to transfer, in particular
under § 1404, is dispositive or not under 28 U.S.C. § 636, see, e.g., Skolnick v. Wainer, No. CV
2013-4394, 2013 U.S. Dist. LEXIS 135139, at *2 n.1 (E.D. N.Y. Sept. 20, 2013) (Go, Mag. J.)
(citing cases in Magistrate Judge’s Order); Beavers v. Express Jet Holdings, Inc., 421 F. Supp.
2d 994, 995 & n.2 (E.D. Tex. 2005) (Hines, Mag. J.) (Report & Recommendation listing
examples of cases Magistrate Judges either deciding venue motions by Order or issuing
Reports); Pavao v. Unifund CCR Partners, 934 F. Supp. 2d 1234, 1241 n.1 (S.D. Cal. 2013)
(collecting cases that transfers under § 1404(a) are considered non-dispositive) cited in Argento,
supra, 2015 U.S. Dist. LEXIS 108818, at *5-6, at least one Magistrate Judge has ruled by Order
on a Rule 45(f) motion to transfer a subpoena proceeding, D.R. Horton, Inc. v. NVR, Inc.,
No. 3:16-MC-053-RJC-DCK, 2016 U.S. Dist. LEXIS 66970 (W.D.N.C. May 20, 2016) (Keesler,
Mag. J.) (finding exceptional circumstances to transfer proceeding to issuing court, the District
of New Jersey, due to judicial economy, efficient case management, and administration of justice
would be better served by transfer and otherwise the possibility of inconsistent decisions in three
courts); see Argento, supra, 2015 U.S. Dist. LEXIS 108818, at *5-6 (ruling in Order that courts
are in agreement that Rule 45(f) motions to transfer fall within ambit of non-dispositive matters,
citing cases); Miller Constr. Equip. Sales, Inc. v. Clark Equip. Co., No. MC415-013, 2016 U.S.
Dist. LEXIS 13578, at *18 (S.D. Ga. Feb. 4, 2016) (Smith, Mag. J.); but cf. Elliott v. Mission
10

Trust Servs., LLC, No. SA-14-MC-942-XR, at *3, 6 (W.D. Tex. Dec. 1, 2014) (Rodriguez, J.)
(adopting recommendation of Magistrate Judge in an Order on Rule 45(f) motion to transfer on
objection to that Order). As noted by Magistrate Judge Koppe in Argento, supra, “in ruling on
whether to transfer subpoena-related motions, the Court is not depriving a party of a federal
forum to resolve a dispute but is rather transferring the authority to resolve the discovery dispute
to another federal court,” 2015 U.S. Dist. LEXIS 108818, at *6. Even if resolution of the
miscellaneous action on compelling or quashing the subpoena would be dispositive of that action
and result in administratively closing that action, that resolution remains non-dispositive, id. The
underlying motions to compel compliance with the subpoena or to quash it are non-dispositive,
Agincourt Gaming, supra, 2014 U.S. Dist. LEXIS 114348, at *4-5 (citing cases). Thus, the
decision of where those motions should be heard also should be non-dispositive.
Therefore, this Court is considering petitioners’ motion to transfer under Rule 45(f) in
this Order.
II.

Should this Proceeding be Transferred?
A.

Exceptional Circumstances

Weighing the factors to determine if exceptional circumstances exist to warrant transfer
and comparing the situation presented by this proceeding with precedent from other districts,
exceptional circumstances exist to warrant transfer to the District of Delaware.
Some of the grounds Petitioners argue are not exceptional. What is presented here is
enforcement or quashing of subpoenas in a patent case, with minimal discussion that the issuing
court has considered or has pending similar enforcement or quashing issues in the discovery in
that case. The age of the case and the issuing court’s prior experience with the substantive issues
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in the case (testing the validity of the patents at issue) are not pertinent to the questions of the
particularity of Petitioners’ document demands in its subpoena, whether seeking disclosure from
the non-party Respondent is harassment, or whether those demands require disclosing
confidences and trade secrets, issues raised in Respondent’s objections to the subpoenas.
Respondent there has offered to produce non-privileged, responsive documents; Petitioners have
not commented on the sufficiency of that offer.
Petitioners argue that the District of Delaware is familiar with the case (both from the two
years hearing it as well as deciding validity of the underlying patent in a prior action). The
question here is the issuing court’s familiarity with discovery, the complexity of that discovery in
the underlying case (that is, whether this Court as the compliance court can step into this portion
of discovery without the full procedural context of the rest of the case), and whether there is a
possibility of inconsistency if this Court does not transfer the subpoena proceeding. As
Respondent notes (Docket No. 10, Respt. Memo. at 2), the issuing court always is familiar with
the proceedings before it and that by itself is not exceptional; what would be exceptional is if
discovery is complicated and involved and is continuing in the subpoena before the compliance
court. Has the issuing court already ruled on the discovery issues—not necessarily the
underlying merits of the claims in the case (as argued by Petitioners)—in order to justify
transfer? Is there the potential for inconsistent decisions between the issuing and compliance
courts that would place the parties and the non-party Respondent in jeopardy? Petitioners cite to
prior discovery motions decided in the Delaware case (Petrs.’ Reply Memo. at 4 n.2, 10),
claiming that ten discovery disputes have a “bearing on the relevance of the requested discovery
in this case” (id. at 10), but these disputes address claim construction, what products possibly
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infringed, and prosecution histories for infringements under one of the patents. What are not
clearly presented are discovery motions on the issues of the relevance of Petitioners’ requests
and either the issuing court’s decision or consideration of those motions. This would be an
example of an exceptional circumstance.
One factor that weighs in favor of transferring this subpoena proceedings to the issuing
court is the timing of discovery completion in the issuing court, now due to be completed in early
September; that is the case management concern contemplated by the advisory committee for
Rule 45(f), Fed. R. Civ. P. 45(f) advisory committee note to 2013 amendment. While this Court
strives for prompt dispositions, the issuing court would be in a better position to adjudicate this
matter within the existing deadlines or to extend the discovery schedule in light of this matter (or
allow this subpoena and the discovery surrounding it to proceed on a separate track from the
main discovery and have the existing deadline remain). But Petitioners have the alternative of
seeking a further extension of the discovery deadline (again, generally or to allow resolution of
this specific discovery dispute) from the issuing court while awaiting decision of the subpoena
issues by the compliance Court without requiring transfer of the subpoena proceedings. Also
within this factor of case management is the fact that a number of filings in this proceeding and
in the Delaware case are filed under seal or with redactions (see generally Docket sheet for
Cadence Pharmaceuticals v. InnoPharma Licensing LLC, No. 14-cv-01225-LPS), slowing
consideration of the subpoena motions by the compliance Court. Some of the docket items in the
Delaware case cited to by Petitioners (Petrs.’ Reply Memo. at 4 n.2) were filed under seal in the
District of Delaware (e.g., 14-cv-01225, Docket Nos. 143, 149, 171, 172, 186). The court
sealing those items, here the issuing court, would be in a better position to consider the sealed
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items in an expeditious manner (especially given the existing September 2, 2016, discovery
deadline).
Another factor is Respondent’s relevance objection and which court is in the better
position to determine if Petitioners’ document requests are relevant to their infringement claims.
On the one hand, determination of relevance in discovery generally is not exceptional; such
decisions occur with almost every motion to compel or for a Protective Order, see Fed. R. Civ.
P. 26(b)(1), (c). What makes it exceptional here is the issuing court’s intimate familiarity with
the issues surrounding the patents, the substantive issues of this case and the predecessor case,
which any other court (including this compliance Court) would have to learn, see Patriot Nat’l
Ins. Group v. Oriska Ins. Co., 973 F. Supp. 2d 173, 175, 176 (N.D.N.Y. 2013) (Peebles, Mag. J.)
(on argument of opponent that subpoenaed material was irrelevant to case, court held that
“relevance argument emphasizes the need for the court where the underlying matter lies to
decide the matter”); XY, LLC v. Trans Ova Genetics, L.C., 307 F.R.D. 10, 12 (D.D.C. 2014).
Adding the factor just discussed regarding case management and the schedule in the issuing
court, the compliance Court would have to educate itself on issues that the issuing court has
considered in two actions (one to judgment later affirmed on appeal, Cadence Pharm., Inc. v.
Exela Pharma Scis., LLC, No. 11-733-LPS, 2013 WL 11083853 (D. Del. Dec. 14, 2013), aff’d,
780 F.3d 1364 (Fed. Cir. 2015) (Petrs.’ Reply Memo. at 6 (filed under seal))), before the present
September 2, 2016, discovery deadline.
B.

Burden of Transfer to Respondent

As for the burden of a transfer to Delaware upon Respondent, Respondent points out the
burdens any party faces in defending a proceeding in a remote forum (here moving to quash a
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subpoena or resisting compliance with it). The witnesses and documents sought in the
subpoenas are all in the Western District of New York, attorneys admitted or granted leave to
appear in Delaware need to be retained and Respondent has to appear at proceeding(s) in that
district. The advisory committee for the 2013 amendment to Rule 45(f) recommended using
telecommunication techniques and devices to avoid some the onerous travel expense for the
responding party (see Petrs.’ Reply Memo. at 8 (filed under seal)) and Rule 45(f) allows
attorneys admitted in the compliance court to file in the issuing court as officers of the issuing
court, Fed. R. Civ. P. 45(f) advisory committee note for 2013 amendment; Fed. R. Civ. P. 45(f),
obviating the necessity of retaining local counsel.
C.

Weighing Factors

The interest in determining the relevant documents and testimony that should be
produced pursuant to the subpoenas outweighs the burden imposed upon Respondent to appear
in Delaware to resist that production. Petitioners have established the existence of exceptional
circumstances to warrant transfer to the issuing district and their motion (Docket No. 2) to
transfer this proceeding to the District of Delaware is granted. The Court Clerk of this District
is instructed to transfer this proceeding, including documents filed under seal and certain
documents sent to Chambers that were sought to be filed under seal (see Docket No. 3), to the
District of Delaware.
III.

Results
With this Order, this Court need not consider Petitioners’ motion to seal (Docket No. 3)

their motion to compel compliance (Docket No. 1) papers, and defer that motion (as well as the

15

motions to compel or to quash (Docket No. 12)) to the District of Delaware, as the transferee
issuing court.
CONCLUSION
For the reasons stated above, petitioners’ motion (Docket No. 2) to transfer this
miscellaneous proceeding to the District of Delaware pursuant to Federal Rule 45(f) is granted.
The Court Clerk of this District is instructed to transfer this proceeding, including documents
filed under seal and those sought to be filed under seal (available from Chambers of the
undersigned), to the District of Delaware.
As a result, petitioners’ motion to seal (Docket No. 3) their moving papers (see Docket
No. 1) is deferred to the issuing court, the District of Delaware, as with the other pending
matters in this proceeding (Docket Nos. 1, 12).
Leave for Respondent to file a sur-reply (Docket No. 19) is denied.
So Ordered.

/s/ Hugh B. Scott
Hon. Hugh B. Scott
United States Magistrate Judge

Dated: Buffalo, New York
August 15, 2016

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