8/9/2019 Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS (D. Del. Apr. 29, 2015).

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

BRISTOL-MYERS SQUIBB CO.,

E.R. SQUIBB SONS L.L.C.,

ONO PHARMACEUTICAL CO., LTD.,

and TASUKU HONJO,

Plaintiffs,

V.

MERCK CO., INC., and

MERCK SHARP DOHME CORP.

Defendants.

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OR ER

C.A. No. 14-1131-GMS

WHEREAS, on November 21, 2014, the plaintiffs, Bristol-Myers Squibb Co., E.R.

Squibb Sons L.L.C., Ono Pharmaceuticals Co., Ltd., and Tashuku Honjo (collectively,

BMS ), filed an Amended Complaint against the defendants, Merck Co., Inc. and Merck

Sharp Dohme Corp. ( Merck ) alleging infringement o U.S. Patent No. 8,728,474 ( the '474

Patent ) (D.I. 24) and, on December 8, 2014, Merck filed its Answer to the Amended Complaint

(D.I. 31 ;

WHEREAS, on October 28, 2014, Merck filed a Motion to Transfer to the District o

New Jersey (D.I. 11) and its accompanying Opening Brief in Support (D.I. 12);

WHEREAS, on November 17, 2014, BMS filed its Answering Brief in Opposition to

Merck's Motion to Transfer (D.I. 19) and, on December 3, 2014, Merck filed its Reply (D.I. 26);

8/9/2019 Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS (D. Del. Apr. 29, 2015).

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WHEREAS, the court, having considered the instant motion, the response and reply

thereto, and the applicable law, concludes that Merck has not demonstrated that a transfer of the

above captioned matter to the District ofNew Jersey is appropriate in this case;

1

1

When faced with a defendant's motion to transfer venue pursuant to 28 U.S.C. § 1404(a), the Third

Circuit's decision in Jumara

v

State Farm Ins Co. 55 F.3d 873 (3d Cir. 1995) is instructive. In re Link-A-Media

Devices Corp. 662 F.3d 1221, 1222-23 (Fed. Cir. 2011) ( In reviewing a district court's ruling on a motion to

transfer pursuant to § 1404(a), we apply the law of the regional circuit ). [C]ourts confronting a motion to

transfer first ask whether the action could have been brought

in

the proposed transferee venue and then determine

whether transfer to a different forum would best serve the interests of ustice and convenience.

Smart Audio Tech.

LLC v Apple Inc. 910

F.

Supp. 2d 718, 725 (D. Del. 2012). With regard to the second step of this inquiry,

Jumara

instructed district courts look to the various private and public interests protected by § 1404 rather than to

any 'definitive formula. ' Id (citing Jumara

55

F.3d at 879). The court turns to the Jumara analysis because

neither party argues the case could not have been filed in the District of New Jersey.

Private factors discussed in

Jumara

include: (1) pla int iffs forum preference

as

manifested in the original

choice, (2) the defendant 's preference, (3) whether the claim arose elsewhere, (4) the convenience of the

parties

as

indicated by their relative physical and financial condition, (5) 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 (6) the location of

books and records (similarly limited to the extent that the files could not be produced in the alternative forum).

55

F.3d at 879.

In this case, a number of private factors weigh against granting Merck's motion to transfer. First, with

regard to plaintiffs forum preference this factor weighs against transfer because BMS decided to file suit in the

District

of

Delaware. While not dispositive, the court places significance on the pla int iff s choice of forum

particularly where, as here, the plaintiff is organized under the laws of Delaware and both parties have a global

reach. Second, as evidenced by the instant motion, Merck prefers to litigate this patent infringement suit in the

District of New Jersey. (DJ. 11.) Consequently, this factor weighs slightly in favor of transfer. Jumara 55 F.3d at

879. The third

Jumara

private interest factor asks whether the claim arose elsewhere.

Id

at 879. Patent

infringement arises whenever someone has committed acts of infringement, to wit, 'makes, uses, offers to sell, or

sells any patent invention' without authority. Cellectis S A

v

Precision Biosciences Inc. 858

F.

Supp. 2d 376,

381 (D. Del. 2012) (quoting

35

U.S.C. § 27l(a)). Therefore, this factor focuses on the activity surrounding the

production, design and manufacture of the alleged infringing product.

McRo Inc

v

Activision Blizzard Inc.

No.

12-cv-1508-LPS-CJB, 2013 WL 6571618, at 5 (D. Del. Dec. 13, 2013), report an d recommendation adopted 2013

WL

6869866 (Dec. 30, 2013). In this case, BMS has filed a declaratory judgment action

in

order to prevent future

marketing of pembrolizumab, hence the drug has not reached Delaware's market. Rather, the alleged infringing

activity pertains to business activity and decisions made by Merck in New Jersey.

DJ. 12

at 11.) Consequently,

this factor weighs in favor of granting the transfer motion. The fourth factor requires that the court consider the

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

55

F.3d at 879.

In this case, Merck is a corporation with global reach and annual revenues in the billions. The court concludes

litigating in Delaware will not impose an undue financial burden on Merck.

See Graphics Prop. Holdings Inc

v

Asus Computer International Inc. 964

F.

Supp. 2d 320 (D. Del. 2013).

As

such, this factor weighs against transfer.

Next, the court considers the convenience of the witnesses-but only to the extent that the witnesses may actually

be

unavailable for trial in one

of

the fora. Jumara 55 F.3d at 879. Merck has not persuaded the court that any

witnesses will be unavailable to testify in the District of Delaware. Merck proffered a laundry list of its own

employees but witnesses employed by the parties are not considered by a court conducting venue transfer analysis

because the parties are obligated to procure the presence of their own employees at trial. Nilssen v Everbrite Inc.

No.

OO-cv-189-JJF,

2001 WL 34368396, at 2 (D. Del. Feb.

16,

2001). Moreover, the court finds Merck's

discussion regarding Dr. Iwai's research colleagues at Rockefeller University to be speculative. DJ.

12 at

8; DJ.

19 at 16-17.)

As

such, this factor weighs against transfer. Sixth, with regards to the location of books and records,

Merck has not met its burden to show such materials could be produced in New Jersey and not Delaware. Indeed,

[w]ith new technologies for storing and transmitting information, the burden of gathering and transmitting

documents 3,000 miles

is

probably not significantly more than it

is

to transport them 30 miles.

Graphics Prop.

8/9/2019 Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., C.A. No. 14-1131-GMS (D. Del. Apr. 29, 2015).

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IT

IS

HEREBY ORDERED that:

1.

Merck's Motion to Transfer Venue to the District ofNew Jersey (D.I. 11) is DENIED.

Dated: April

1 9{

2014

964 F. Supp. 2d at 330 (quoting ADE Corp.

v

KLA-Tencor Corp.

138

F. Supp. 2d 565,

571

D. Del. 2001)). This

factor weighs against transfer.

A review

of

the public interest factors likewise indicate transfer

is

not warranted in this instance. Public

interest factors include:

I)

the enforceability

of

the judgment, (2) practical considerations that could make the

trial easy, expeditious, or inexpensive, (3) the relative administrative difficulty in the two fora resulting from court

congestion, (4) the local interest in deciding local controversies at home, and (5) the familiarity

of

the trial judge

with the applicable state law

in

diversity cases. Jumara

55

F.3d at 879-80.

First, there

is

no suggestion by either party that a judgment of infringement would be unenforceable in

either District. This factor is neutral. Second, as to the practical considerations that could make the trial easy,

expeditious, or inexpensive, Id at 879, the court rejects Merck's argument that given the relative proximity

of

the

parties, witnesses and evidence to the District of New Jersey, transfer to New Jersey would make the trial easier and

less expensive.' (D.I.

12

at 15.) This factor weighs against transfer. Third, with regard to the relative

administrative difficulty

in

the two fora resulting from court congestion, the court recognizes that judges

in

the

District

of

Delaware oversee complex dockets with numerous patent cases. But this reality is not an outright

determinative factor of whether or not to grant transfer motions. The court is slightly persuaded by those statistics

offered by BMS showing the time from filing to a patent trial in the District

of

New Jersey

is

more than in the

District of Delaware. (D.I. 19 at 19.) Although time-to-trial statistics are somewhat speculative due to the inherent

unpredictability

in

patent litigation, the court nonetheless weighs this slightly in favor

of

denying transfer.

See

Endeavor MeshTech

Inc v

Aclara

Tech

LLC No. 13-cv-1618-GMS, 2015 WK 849211, at *6 (D. Del. Feb. 25,

2015). Fourth,

as

to the local interest in deciding local controversies at home,

Jumara 55

F.3d at 879, [i]n patent

litigation, the local interest factor is typically neutral, because patent issues do not give rise to a local controversy or

implicate local interests. Graphics Prop. Holdings 964 F. Supp. 2d at 330 (internal quotation and further citation

omitted). Finally, the fifth factor considers the familiarity

of

the trial judge with the applicable state law in

diversity cases. Jumara 55 F.3d 879-80. The instant lawsuit deals with infringement arising under the Patent

Act-a federal statute. Consequently, this factor is neutral.

In summary, the court finds the Jumara public and private interest factors weigh against granting Merck's

motion to transfer venue to the District of New Jersey.