The opinion of the court was delivered by: Arthur J. Schwab United States District Court Judge
Memorandum Order Granting Plaintiffs' Motion to Transfer (Doc. No. 35)
This is an action in patent infringement. Plaintiffs allege that defendants are infringing ten (10) of the plaintiffs' patents and defendants allege, by counterclaim, that an eleventh (11th)
patent held by plaintiffs is invalid. Currently pending before this Court is plaintiff's motion to transfer this action to the United States District Court for the Southern District of New York, where a previously filed action is currently pending, or in the alternative, to stay this litigation pending the outcome of the New York action (doc. no. 35). On March 15, 2012, defendants entered their response thereto (doc. no. 37).
Plaintiffs filed suit in this Court protectively due to the 45 day filing window imposed by the Hatch-Waxman Act.*fn1 Doc. No. 1. Defendants, without being served, filed an answer on January 23, 2012, and filed a counterclaim regarding a patent that plaintiffs had not asserted. Doc. No. 7. On the same day, defendants filed a motion in the Southern District of New York seeking transfer of that case to this Court, and that motion was denied. Takeda Pharm. Co., Ltd., et al, v. Mylan Inc., et al, 1:12-cv-24, Docs. No. 12, 37 (S.D.N.Y.).
Since 2003, plaintiffs have filed suit in the United States District Court for the Southern District against 15 defendants involving the same subject matter as the current case -- pioglitazone hydrochloride. The Honorable Denise Cote has presided over all of these cases. See, e.g., 1:04-cv-1966 (S.D.N.Y.); 1:07-cv-3844 (S.D.N.Y.). Two cases against defendants are included among these cases. The first case included a three (3)-week bench trial and appeals to the United States Court of Appeals for the Federal Circuit and United States Supreme Court. Takeda Chem. Indus., Ltd, v. Mylan Labs., Inc., 417 F.Supp.2d 341 (S.D.N.Y. 2006), aff'd 492 F.3d 1350 (Fed. Cir. 2007), cert. denied 552 U.S. 1295 (2008). The second case resulted in settlement. 1:08-cv-6999, Doc. No. 64 (S.D.N.Y.).
On November 21, 2011, defendants filed an Abbreviated New Drug Application with the Federal Drug Administration to market a generic form of ACTOPLUS MET XR. Plaintiffs then filed suit in the United States District Court for the Southern District of New York and subsequently in this Court within the 45 days required by 21 U.S.C. § 355(j)(5)(B)(iii).
Title 28 United States Code Section 1404(a) provides simply that "for the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." There are numerous private and public factors which a Court may consider where a transfer is sought, and critically, plaintiffs' choice of forum is generally a significant consideration in deciding a discretionary motion to transfer under Section 1404(a).
In addition to the plaintiffs' choice of forum, other private factors include where the case arose, the convenience of the parties/witnesses, and the location of books and records. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). Public factors include the practical consideration that would make a trial expeditious or less expensive, administrative difficulties, court congestion, and local interest.
In addressing almost this exact issue, one court has held that a plaintiff who files two identical suits in different districts because of the 45-day statute of limitations under the Hatch-Waxman Act expresses its preference of venue by (a) which venue the first suit was filed in and (b) which venue service was effected against defendants. Celgene Corp. v. Abrika Pharm. Inc., 2007 WL 1456156, at *5 (D. N.J. May 17, 2007). In this case, plaintiffs first filed suit against defendants on January 3, 2012, in the Southern District of New York, and effected service upon defendants on January 5, 2012. 1:12-cv-24, Doc. Nos. 1, 6 (S.D.N.Y.). Plaintiffs filed this suit on January 6, 2012, and never effected service upon defendants. Doc. No. 1.
The cases upon which defendants rely in support of their argument that transfer is inappropriate, are distinguishable from this case. For example, in Aventis Pharma Deutschland GMCH v. Lupin Ltd., 403 F.Supp.2d 484 (E.D. Va. 2005), plaintiff only moved to stay the action, not to transfer it. In this case, ...