Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 1 of 14 PageID #: 542
`Case 1:11—cv—OO797—RGA Document 94-2
`Filed 12/19/11 Page 1 of 14 Page|D #: 542
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`TAB 2
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`TAB 2
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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 2 of 14 PageID #: 543
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`Only the Westlaw citation is currently available.
`
`United States District Court,
`D. Delaware.
`FOREST LABORATORIES INC., et al., Plaintiffs,
`v.
`COBALT LABORATORIES INC., et al., Defen-
`dants.
`
`C.A. No. 08-21-GMS-LPS.
`March 9, 2009.
`
`West KeySummaryPatents 291
`
`288(4)
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k288 Jurisdiction
` 291k288(4) k. Regular and established
`place of business. Most Cited Cases
`There were insufficient contacts between the
`state of Delaware and two pharmaceutical companies
`that were defendants in a patent infringement action,
`to give Delaware courts personal jurisdiction over the
`pharmaceuticals. Neither of the pharmaceuticals had
`any offices, facilities, employees, telephone listings,
`bank accounts, or property in Delaware; neither were
`registered to do business or sell pharmaceuticals in
`the state; nor did either advertise, derive substantial
`revenues, or initiate litigation in Delaware. The con-
`tention that the pharmaceuticals nonetheless had con-
`tinuous and systematic contacts with Delaware rested
`largely on the fact that one of the pharmaceuticals
`incorporated its wholly-owned subsidiary in Dela-
`ware. However, the incorporated entity was a shell
`corporation. The record did not demonstrate continu-
`ous and systematic contacts. 10 West's Del.C. §
`3104(c).
`
`Jack B. Blumenfeld, Maryellen Noreika, James Wal-
`ter Parrett, Jr., Morris, Nichols, Arsht & Tunnell,
`Wilmington, DE, for Plaintiffs.
`
`Mary Matterer, Morris James LLP, Wilmington, DE,
`for Defendants.
`
`Page 1
`
`Deanne M. Mazzochi, Pro Hac Vice.
`
`John Polivick, Pro Hac Vice.
`
`Neil A. Benchell, Pro Hac Vice.
`
`Paul J. Molino, Pro Hac Vice.
`
`William Rakoczy, Pro Hac Vice.
`
`REPORT AND RECOMMENDATION
`LEONARD P. STARK, United States Magistrate
`Judge.
`*1 Plaintiffs in this patent infringement action
`are Merz Pharma GmbH & Co. KGaA, Merz Phar-
`maceuticals GmbH, Forest Laboratories, Inc ., and
`Forest Laboratories Holdings, Ltd. (collectively,
`“Plaintiffs”). Plaintiffs hold all ownership interests in
`U.S. Patent No. 5,061,703 (“the °2C703 Patent”),
`entitled “Adamantane Derivatives in the Prevention
`and Treatment of Cerebral Ischemia.” Among the
`twenty-six defendants are Orchid Chemicals &
`Pharmaceuticals Ltd. (“Orchid India”), Orchid Phar-
`maceuticals, Inc. (“Orchid Pharma”), and Orgenus
`Pharma, Inc. (“Orgenus”).
`
`Presently pending before the Court are motions
`to dismiss for lack of personal jurisdiction filed by
`Orchid India and Orgenus (hereinafter referred to
`together as “Defendants”). (Docket Item No. (“D.I.”)
`43; D.I. 87) FN1 Defendants contend that they do not
`have sufficient contacts with Delaware to allow this
`Court to exercise jurisdiction over them. Plaintiffs
`disagree and oppose Defendants' motions. Plaintiffs
`also argue that if the Court finds a lack of personal
`jurisdiction with respect to Orchid India or Orgenus,
`then these actions against these Defendants should be
`transferred to the U.S. District Court for the District
`of New Jersey, where there is, undisputedly, jurisdic-
`tion. (D.I. 99; D.I. 153)
`
`FN1. Unless otherwise noted herein, all
`docket entries to which I refer may be found
`in the lead case, C.A. No. 08-21-GMS-LPS.
`
`I find that there are insufficient contacts between
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 3 of 14 PageID #: 544
`Page 2
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`Delaware and Orchid India or Orgenus and, there-
`fore, that this Court lacks personal jurisdiction over
`these Defendants. However, I also find that dismissal
`would be inappropriate and, instead, that transfer is
`warranted. Accordingly, I recommend that Plaintiffs'
`motions to transfer be granted and that Defendants'
`motions to dismiss be denied as moot.FN2
`
`FN2. Pursuant to the March 20, 2008 and
`June 10, 2008 referral orders (C.A. No. 08-
`21-GMS-LPS D.I. 55; C.A. No. 08-291-
`GMS-LPS D.I. 13), as well as 28 U.S.C. §
`636, my authority with respect to the case-
`dispositive motions to dismiss is limited to
`issuing a Report and Recommendation (“R
`& R”). There is a split of authority as to
`whether a motion to transfer is also case-
`dispositive. Compare Oliver v. Third Wave
`Techs., Inc., 2007 WL 2814598, at *2 n. 3
`(D.N.J. Sept.25, 2007) (magistrate judge is-
`suing R & R concerning motion to transfer
`venue in patent case) with Kendricks v.
`Hertz Corp., 2008 WL 3914135, at *2
`(D.Vi. Aug.18, 2008) (“A motion to transfer
`venue is not a dispositive motion.”); Berg. v.
`Aetna Freight Lines, 2008 WL 2779294, at
`*1 n. 1 (W.D.Pa. July 15, 2008) (same).
`Given the uncertainty on this point, as well
`as the parties' request for an R & R (D.I.
`227; D.I. 228), I will treat all of the pending
`motions as case-dispositive and issue an R
`& R.
`
`BACKGROUND
`
`A. The Plaintiffs
`Plaintiff Merz Pharma GmbH & Co. KGaA is a
`German corporation with its principal place of busi-
`ness in Germany. (D.I. 1 ¶ 3) Plaintiff Merz Pharma-
`ceuticals GmbH is also a German corporation with a
`principal place of business in Germany. (Id. at ¶ 4)
`The Merz entities are the sole assignees of the
`°2C703 Patent. (Id. at ¶ 27)
`
`(“Forest
`Inc.
`Plaintiff Forest Laboratories,
`Labs”) is a Delaware corporation with its principal
`place of business in New York. (Id. at ¶ 1) Plaintiff
`Forest Laboratories Holdings, Ltd. (“Forest Hold-
`ings”), a wholly-owned subsidiary of Forest Labs, is
`an Irish corporation with its principal place of busi-
`ness in Bermuda. (Id. at ¶ 2) The Forest entities are
`the exclusive licensees of the °2C703 Patent in the
`
`United States. (Id. at ¶ 28) Forest also holds New
`Drug Application (“NDA”) No. 21-487 for Namenda
`brand memantine hydrochloride tablets. (Id.) The
`°2C703 Patent is listed in the U.S. Food and Drug
`Administration's (“FDA”) “Orange Book,” i.e., the
`Approved Drug Products with Therapeutic Equiva-
`lence Evaluations, for Namenda. (Id.) The Forest
`entities are the exclusive distributors of Namenda in
`the United States. (Id. at ¶ 29)
`
`B. The Defendants
`*2 Defendant Orchid India is an Indian company
`with its principal place of business in India. (Id. at ¶
`9) It is involved in the development and manufacture
`of active pharmaceutical ingredients and finished
`dosage forms, as well as drug discovery. (D.I. 44 at
`4; D.I. 45 ¶ 2)
`
`Defendant Orchid Pharma is a wholly-owned
`subsidiary of Orchid India. (D.I. 1 ¶ 8; D.I. 46 ¶ 2;
`D.I. 89 at 6) Orchid Pharma is a holding company
`incorporated in Delaware with a principal place of
`business in Delaware. (D.I. 1 ¶ 8; D.I. 44 at 5; D.I. 45
`¶ 4; D.I. 46 ¶¶ 2, 4; D.I. 89 at 3, 6) Orchid Pharma is
`essentially a shell corporation; the only action it has
`ever taken was to incorporate co-defendant Orgenus.
`(D.I. 100 at 23-26; D.I. 101 Ex. 2; D.I. 165 at 6, Ex.2;
`D.I. 226 (Transcript of Nov. 12, 2008 Hearing; here-
`inafter “Tr.”) at 38, 48-50) FN3
`
`FN3. Orchid Pharma has not moved to dis-
`miss. However, Plaintiffs, in connection
`with their fallback request for transfer, have
`asked that, if jurisdiction is found to be lack-
`ing over Orchid India or Orgenus, its action
`against Orchid Pharma be dismissed. (See
`Tr. at 38-39.) For reasons to be discussed in
`relation to the transfer motions, I recom-
`mend that Orchid Pharma be dismissed.
`
`Defendant Orgenus, a wholly-owned subsidiary
`of Orchid Pharma, is a New Jersey corporation hav-
`ing its principal place of business in New Jersey.
`(D.I. 89 at 3, 5; D.I. 90 ¶¶ 2-3; C.A. No. 08-291 D.I.
`1 ¶ 5) Orgenus is Orchid India's primary business
`contact for the United States and Canada. (D.I 89 at
`5; D.I. 90 ¶ 2)
`
`Another entity, Orchid Healthcare, Ltd. (“Orchid
`Healthcare”), is a division of Orchid India. (D.I. 44 at
`4; D.I. 45 ¶ 3) Orchid Healthcare is not a defendant.
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 4 of 14 PageID #: 545
`Page 3
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`C. Defendants' ANDA
`On October 16, 2007, Orchid India, through its
`Orchid Healthcare division, submitted Abbreviated
`New Drug Application (“ANDA”) No. 90-044, seek-
`ing FDA approval to manufacture and distribute “ge-
`neric” versions of memantine hydrochloride in the
`United States. (D.I. 1 ¶ 45; D.I. 45 ¶ 14; D.I. 46 ¶¶
`11-12; D.I. 89 at 5; D.I. 90 at 12-13; C.A. 08-291 D.I.
`1 ¶ 16) FN4 The ANDA had been prepared by Orchid
`India in India. (D.I. 44 at 5; D.I. 45 ¶ 15; D.I. 90 ¶
`14) The ANDA named Orgenus as Orchid India's
`U.S. regulatory agent. (D.I. 44 at 5; D.I. 45 ¶ 14; D.I.
`46 ¶¶ 10-11 & Ex. A; D.I. 89 at 5; D.I. 90 ¶¶ 11-12)
`Orgenus was also responsible for the physical act of
`submitting the ANDA, having placed it in the mail to
`the FDA in Maryland from Orgenus' place of busi-
`ness in New Jersey. (D.I. 44 at 5; D.I. 46 ¶ 11; D.I.
`89 at 5; D.I. 90 ¶ 12) Orchid Pharma did not partici-
`pate in, contribute to, or otherwise aid in the prepara-
`tion of ANDA No. 90-044 or in its submission to the
`FDA. (D.I. 44 at 5-6; D.I. 45 ¶ 16; D.I. 46 ¶ 8; D.I. 89
`at 6; D.I. 90 ¶ 14)
`
`FN4. For a discussion of the Hatch-Waxman
`Act and the ANDA process, see Eli Lilly
`and Co. v. Medtronic, Inc., 496 U.S. 661,
`676-78, 110 S.Ct. 2683, 110 L.Ed.2d 605
`(1990).
`
`D. Defendants' Contacts With Delaware
`Jurisdictional discovery is complete. From the
`record before me, it is clear-and undisputed-that nei-
`ther Orchid India nor Orgenus has any offices, facili-
`ties, employees, telephone listings, bank accounts, or
`property in Delaware. Neither of them are registered
`to do business or licensed to sell drugs in Delaware.
`Nor do either of the Defendants solicit business here,
`sell products here, or derive substantial revenues
`from sales here. They do not engage in advertising
`directly to U.S. consumers, including in Delaware;
`have not commenced any legal actions or proceed-
`ings in Delaware; and have not been named as defen-
`dants in any Delaware actions. (D.I. 44 at 4-5; D.I. 45
`¶¶ 7, 9-11; D.I. 89 at 5-6; D.I. 90 ¶¶ 5-10)
`
`*3 Furthermore, Orchid India's employees do not
`make regular visits to Delaware. (D.I. 45 ¶ 8) Nor
`does Orchid India sell products directly to retailers in
`the United States; instead, it partners with other com-
`panies who sell its products in this country. (D.I. 44
`
`at 4-5; D.I. 45 ¶ 9) Likewise, Orgenus does not sell or
`distribute any products anywhere in the United
`States. (D.I. 89 at 5-6; D.I. 90 ¶¶ 6-7) Orgenus also
`does not contract with Orchid India's business part-
`ners in the United States. (D.I. 89 at 5-6; D.I. 90 ¶ 6)
`
`Nonetheless, Plaintiffs assert there are multiple
`contacts between Defendants and Delaware that give
`rise to personal jurisdiction. The nature of these as-
`serted contacts, and the record evidence relating to
`them, are described below.
`
`1. Purchases from Delaware companies
`Orchid India often uses materials (e.g., excipi-
`ents, packaging) in its generic products that are sup-
`plied by companies incorporated in or located in
`Delaware. (D.I. 152 at 13) If its memantine ANDA is
`approved, Orchid India will likely purchase resin for
`the containers from Chevron Phillips Chemical Com-
`pany, the closure for the containers from Rexam Clo-
`sures and Containers, and the liner for the closures
`from Selig Sealing Products, Inc. (Id.) All three of
`these are Delaware companies, although they are
`located outside of Delaware, in Texas, Indiana, and
`Illinois, respectively. (D.I. 133 at 15; D.I. 134 Ex. 7)
`
`Relatedly, the component comprising the largest
`portion (81% by weight) of Orchid India's proposed
`generic tablets, microcrystalline cellulose (“MCC”),
`is manufactured by FMC BioPolymer, a company
`located in Delaware. (D.I. 152 at 13; Tr. at 43-44)
`However, invoices show that it was purchased by
`Orchid India from an Indian company-Signet Chemi-
`cal Corporation-in India. (D.I. 133 at 7, 14-15; D.I.
`134 Exs. 5, 8)
`
`Also, Orchid India has entered into at least nine
`agreements (covering eight products) with Quest
`Pharmaceuticals Services (“Quest”), a Delaware cor-
`poration located in Newark, Delaware, giving Orchid
`India an ongoing relationship with a Delaware com-
`pany located in Delaware. (D.I. 165 at 3-4 & Exs. 9-
`17) In particular, the record contains 46 invoices
`from Quest to Orchid India for analytic services pro-
`vided over a period of three years. (Tr. at 47)
`
`2. Distribution agreements with Delaware compa-
`nies
`
`“Orchid India also ... has five or six separate dis-
`tribution deals with Delaware companies for its
`ANDA products.” (Tr. at 47; see also Tr. at 39; D.I.
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 5 of 14 PageID #: 546
`Page 4
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`100 at 10-12; D.I. 152 at 7-9; D.I, 165 at 3.) Relat-
`edly, Orgenus has entered into at least five confiden-
`tiality agreements with Delaware entities that were
`either current or prospective distribution partners of
`Orchid India. (D.I. 152 at 12 & Exs. 15-19)
`
`3. Clinical trials conducted by Delaware compa-
`nies
`
`Clinical trials-specifically, bioavailability and
`bioequivalence in vivo testing-relating to Orchid In-
`dia's memantine ANDA were performed by a Dela-
`ware company, AAIPharma, Inc. (D.I. 152 at 13; see
`also D.I. 100 at 18-19; D.I. 102 Ex. 26) Orchid India
`submitted the results of these tests to the FDA as part
`of its ANDA. (Id.) The actual tests, however, were
`performed outside of Delaware, in North Carolina
`and Kansas. (D.I. 133 at 15-16; D.I. 134 Exs. 9, 10)
`
`4. Visits to Delaware by sales representatives
`*4 Orchid India representatives came to Dela-
`ware to enter into an alliance with DuPont relating to
`safety standards. Specifically, four Orchid India rep-
`resentatives made a single visit to DuPont in Dela-
`ware. (D.I. 133 at 9; D.I. 134 Ex. 5; Tr. at 17) During
`this visit, the representatives did not conduct any
`business relating
`to Orchid India's memantine
`ANDA. (D.I. 133 at 9; D.I. 134 Ex. 5; Tr. at 17) In-
`stead, their activities primarily consisted of visiting a
`DuPont work site and a museum. (D.I. 133 at 9; D.I.
`134 Ex. 5)
`
`5. Incorporation in Delaware of Orchid Pharma
`In 2004, Orchid India incorporated its wholly-
`owned subsidiary, Orchid Pharma, in Delaware. (D.I.
`100 at 9, 14) In turn, Orchid Pharma incorporated
`Orgenus in New Jersey. (D.I. 100 at 23-26; D.I. 101
`Ex. 2; D.I. 165 at 5; Tr. at 50)
`
`Orchid Pharma is a holding company and, as
`Plaintiffs now recognize, a “shell.” (Tr. at 38, 48-50)
`Orchid Pharma does not conduct any business activi-
`ties and has no independent officers, directors, or
`employees; day-to-day management and operations
`are the responsibility of the Vice President for Busi-
`ness Development of Orgenus. (D.I. 100 at 22-23;
`D.I. 152 at 16-17) Orchid Pharma has no revenues or
`assets and depends on loans from Orchid India,
`which is also responsible for Orchid Pharma's liabili-
`ties. (D.I. 100 at 24; D.I. 152 at 17; D.I. 165 at 5) The
`only act Orchid Pharma has ever taken-incorporating
`Orgenus-was done for the benefit of Orchid India.
`
`Nonetheless, Orchid Pharma is a stand-alone
`corporate entity, observing all proper corporate for-
`malities. Orchid India, Orchid Pharma, and Orgenus
`have separate accounting functions and books, sepa-
`rate bank accounts, separate employees, and separate
`corporate identities. (D.I. 44 at 3, 6, 12-13; D.I. 45 ¶¶
`12-13; D.I. 46 ¶¶ 4-7; D.I. 89 at 3; D.I. 90 ¶ 4; D.I.
`163 at 6-7) Orchid Pharma makes its own decisions
`through its own independent board. (D .I. 163 at 7)
`Orchid Pharma raised its operating capital through
`the issuance of stock; payments it received from Or-
`chid India are recorded on its books as loans. (D.I.
`163 at 7-8; D.I. 165 at 5; D.I. 188 at 5)
`
`6. Relationship between Orchid Pharma and
`Orgenus
`Orgenus was incorporated by Orchid Pharma and
`remains Orchid Pharma's wholly-owned subsidiary.
`(D.I. 89 at 3, 5; D.I, 90 ¶¶ 2-3; D.I. 100 at 23-26; D.I.
`101 Ex. 2; D.I. 165 at 5; C.A. 08-291 D .I. 1 ¶ 5; Tr.
`at 50) But Orchid Pharma is not involved in the daily
`management of Orgenus. (D.I. 163 Ex. 1) Orgenus
`makes it own strategic decisions and has no power to
`act or sign on behalf of Orchid Pharma. (Id.) The
`relationship between Orgenus and Orchid India is
`governed by Services Agreements between these two
`entities, to which Orchid Pharma is not a party. (D.I.
`89 at 5; D.I. 90 ¶ 10; D.I. 100 at 15; D.I. 102 Ex. 16;
`D.I. 152 at 12; D.I. 163 Ex. 1; D.I. 165 at 5; D.I. 188
`at 5)
`
`7. Role as Orchid India's U.S. ANDA agent
`*5 Plaintiffs insist that Orchid Pharma has acted
`as Orchid India's agent for FDA filing purposes. (D.I.
`100 at 9, 14) The only evidence they can cite, how-
`ever, is an ambiguous statement in Orchid India's
`2004 Annual Statement:
`
`The U.S. coordination work including acting as
`agent for filing of regulatory submissions with the
`U.S. FDA was being carried out through a branch
`office in New Jersey, USA hitherto. In order to ca-
`ter to the more demanding requirements of the U.S.
`market, the Board felt that it would be more appro-
`priate to have a separate entity formed in the US.
`Accordingly, your Company promoted Orchid
`Pharmaceuticals Inc. in Delaware state of USA as a
`100% subsidiary company during the year under
`review.
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 6 of 14 PageID #: 547
`Page 5
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`(D.I. 63; D.I. 102 Ex. 6 at OCP00000368) While
`this statement suggests an intent to use Orchid
`Pharma as Orchid India's agent, there is no evidence
`that Orchid Pharma ever actually performed this
`function.
`
`8. Delaware choice of law provisions
`Defendants' Services Agreements, to which the
`only parties are Orchid India and other Orchid enti-
`ties, are governed by Delaware law; in particular,
`Orchid India and Orgenus chose Delaware law to
`govern disputes arising from their relationship. (D.I.
`100 at 15; D .I. 102 Ex. 16; D.I. 152 at 12) Orchid
`India and/or Orgenus are also parties to at least two
`other agreements with other companies that contain
`Delaware choice-of-law provisions. (D.I. 100 at 15;
`D.I. 102 Ex. 15; D.I. 133 at 8; D.I. 152 at 12 & Exs.
`20, 21)
`
`9. Intent to do business in Delaware
`It is undisputed that Orchid India, in cooperation
`with others, markets and distributes generic pharma-
`ceuticals throughout the United States. (D.I. 44 at 4-
`5; Tr. at 16) It is further conceded that if Orchid In-
`dia's memantine ANDA is approved then Orchid In-
`dia will seek to distribute its generic version through-
`out the country. (D.I. 100 at 12; D.I. 101 Ex. 2; Tr. at
`16) There is no evidence that Orchid India has ever
`sought to exclude from its sales efforts Delaware or a
`region of the country containing Delaware. (Tr. at 16
`(Defendants: “[T]here is nothing in the record that
`indicates that Orchid [India] has ever excluded any
`region of the United States ....”))
`
`E. Procedural Background
`Plaintiffs filed their complaint against Orchid In-
`dia and Orchid Pharma, among others, on January 10,
`2008. (D.I.1) On March 3, 2008, Orchid India filed
`its Motion to Dismiss for Lack of Personal Jurisdic-
`tion. (D.I.43) On April 15, 2008, I ordered jurisdic-
`tional discovery. (D.I.64)
`
`After learning that Orchid India's agent in con-
`nection with the memantine ANDA was Orgenus,
`and not Orchid Pharma, Plaintiffs filed a separate
`action against Orgenus on May 16, 2008. (C.A. 08-
`291 D.I. 1) On June 2, 2008, Plaintiffs' two actions
`were consolidated for all purposes, with the original
`action (C.A, 08-21) being designated the lead case.
`(D.I. 76; C.A. 08-291 D.I. 10)
`
`Orgenus filed its Motion to Dismiss for Lack of
`Personal Jurisdiction on June 19, 2008. (D.I.87)
`Plaintiffs filed their responses to Orchid India's and
`Orgenus' motions, including Plaintiffs' contingent
`requests to transfer their claims, on June 27 and Au-
`gust 22, 2008, respectively. (D.I. 99; D.I. 153)
`
`*6 I held oral argument on all pending motions
`on November 12, 2008. (D.I.226) After the filing of
`additional submissions ordered by the Court, briefing
`on these motions was completed on November 19,
`2008. (D.I. 227; D.I. 228)
`
`LEGAL STANDARDS
`A. Motions To Dismiss-12(b)(2)
`Federal Rule of Civil Procedure 12(b)(2) directs
`the Court to dismiss a case when it lacks personal
`jurisdiction over the defendant. Determining the exis-
`tence of personal jurisdiction requires a two-part
`analysis. First, the Court analyzes the long-arm stat-
`ute of the state in which the Court is located. See
`Intel Corp. v. Broadcom Corp., 167 F.Supp.2d 692,
`700 (D.Del.2001). Next, the Court must determine
`whether exercising jurisdiction over the defendant in
`this state comports with the Due Process Clause of
`the Constitution. See id. Due Process is satisfied if
`the Court finds the existence of “minimum contacts”
`between the non-resident defendant and the forum
`state, “such that the maintenance of the suit does not
`offend traditional notions of fair play and substantial
`justice.” International Shoe Co. v. Washington, 326
`U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (in-
`ternal quotation marks omitted). In undertaking the
`Due Process inquiry, the Court applies the law of the
`Federal Circuit.
`
`Once a jurisdictional defense has been raised, the
`plaintiff bears the burden of establishing, by a pre-
`ponderance of the evidence and with reasonable par-
`ticularity, the existence of sufficient minimum con-
`tacts between the defendant and the forum to support
`jurisdiction. See Provident Nat'l Bank v. California
`Fed. Sav. & Loan Ass'n, 819 F.2d 434, 437 (3d
`Cir.1987); Time Share Vacation Club v. Atlantic Re-
`sorts, Ltd., 735 F.2d 61, 66 (3d Cir.1984). To meet
`this burden, the plaintiff must produce “sworn affida-
`vits or other competent evidence,” since a Rule
`12(b)(2) motion “requires resolution of factual issues
`outside the pleadings .” Time Share, 735 F.2d at 67 n.
`9; see also Philips Electronics North America Corp.
`v. Contec Corp., 2004 WL 503602, at *3 (D.Del.
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 7 of 14 PageID #: 548
`Page 6
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`Mar.11, 2004) (“After discovery has begun, the
`plaintiff must sustain [its] burden by establishing
`jurisdictional facts through sworn affidavits or other
`competent evidence.”).
`
`B. Motions To Transfer
`Under appropriate circumstances, transfer of a
`case from one federal court to another is authorized
`by 28 U.S.C. § 1406(a) and 28 U.S.C. § 1631. The
`burden of demonstrating the appropriateness of such
`a transfer rests with the moving party. See Plum Tree,
`Inc. v. Stockment, 488 F.2d 754, 756-57 (3d
`Cir.1973); ADE Corp. v. KLA-Tencor Corp., 138
`F.Supp.2d 565, 567 (D.Del.2001).FN5
`
`FN5. To the extent the caselaw addresses 28
`U.S.C. § 1404(a) (as opposed to § 1406(a)),
`it should be noted that the Third Circuit has
`previously commented “we think [the] ra-
`tionale [of § 1406(a) ] applies equally to §
`1404(a), for these are companion sections,
`remedial in nature, enacted at the same time,
`and both dealing with the expeditious trans-
`fer of an action from one district or division
`to another.” U.S. v. Berkowitz, 328 F.2d 358,
`359 (3d Cir.1964).
`
`DISCUSSION
`A. Delaware's Long-Arm Statute
`Delaware's long-arm statute, 10 Del. C. §
`3104(c), provides in pertinent part:
`
`A Delaware court has personal jurisdiction over
`a non-resident defendant only when that non-
`resident defendant, either in person or through an
`agent:
`
`*7 (1) Transacts any business or performs any
`character of work or service in the State;
`
`(2) Contracts to supply services or things in this
`State;
`
`(3) Causes tortious injury in the State by an act
`or omission in this State;
`
`(4) Causes tortious injury in the State or outside
`of the State by an act or omission outside the
`State if the person regularly does or solicits busi-
`ness, engages in any other persistent course of
`
`conduct in the State or derives substantial reve-
`nue from services, or things used or consumed in
`the State;
`
`(5) Has an interest in, uses or possesses real
`property in the State; or
`
`(6) Contracts to insure or act as surety for, or on,
`any person, property, risk, contract, obligation or
`agreement located, executed or to be performed
`within the State at the time the contract is made,
`unless the parties otherwise provide in writing.
`
`Delaware's courts have construed Delaware's
`long-arm statute “liberally so as to provide jurisdic-
`tion to the maximum extent possible. In fact, the only
`limit placed on § 3104 is that it remain within the
`constraints of the Due Process Clause.” Boone v. Oy
`Partek, 724 A.2d 1150, 1157 (Del.Super.Ct.1997)
`(internal citations omitted), aff'd, 707 A.2d 765
`(Del.Supr.1998) (table); see also Hercules, Inc. v.
`Leu Trust and Banking (Bahamas) Ltd., 611 A.2d
`476, 480 (Del.1992).
`
`Plaintiffs assert that this Court has “general ju-
`risdiction” over Orchid India and Orgenus pursuant
`to subsection (c)(4) of Delaware's long-arm statute
`and “specific jurisdiction” pursuant to subsections
`(c)(1) and (c)(3). They further contend that this Court
`can exercise “dual jurisdiction” under a combination
`of subsections (c)(1) and (c)(4) and also that the long-
`arm statute is satisfied because Orchid Pharma-the
`Delaware corporation-is the “alter ego” or “agent” of
`Orchid India and Orgenus.FN6 Below I analyze, and
`reject, each of these contentions,
`
`FN6. The parties agree that subsections
`(c)(2), (c)(5), and (c) (6) have no application
`to the facts of this case.
`
`1. General Jurisdiction
`Subsection (c) (4) of Delaware's long-arm statute
`confers “general” jurisdiction over a non-resident
`defendant. See, e.g., LaNuova D & B, S.p.A. v. Bowe
`Co., 513 A.2d 764, 768 (Del.Supr.1986); Jeffreys v.
`Exten, 784 F.Supp. 146, 153 (D.Del.1992). “
`‘[G]eneral’ jurisdiction [is that jurisdiction] in which
`the defendant's contacts have no necessary relation-
`ship to the cause of action.” Beverly Hills Fan Co. v.
`Royal Sovereign Corp., 21 F.3d 1558, 1562 n. 10
`(Fed.Cir.1994); see also Boone, 724 A.2d at 1155.
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 8 of 14 PageID #: 549
`Page 7
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`For general jurisdiction to be present, a defendant
`must have continuous and systematic contacts with
`the forum state. See Helicopteros Nacionales de Co-
`lombia, S.A. v. Hall, 466 U.S. 408, 414-15, 104 S.Ct.
`1868, 80 L.Ed.2d 404 (1984). Neither Orchid India
`nor Orgenus have continuous and systematic contacts
`with Delaware.
`
`As already noted above, neither Orchid India nor
`Orgenus have any offices, facilities, employees, tele-
`phone listings, bank accounts, or property in Dela-
`ware; neither are registered to do business or sell
`pharmaceuticals here; nor do they advertise, derive
`substantial revenues, or initiate litigation here. Plain-
`tiffs' contention that Defendants, nonetheless, have
`continuous and systematic contacts with Delaware
`rests largely on the fact that Orchid India incorpo-
`rated its wholly-owned subsidiary, Orchid Pharma, in
`Delaware; and Orchid Pharma, in turn, incorporated
`Orgenus. But Orchid Pharma is a shell corporation;
`incorporating such an entity does not satisfy subsec-
`tion (c)(4). See Applied Biosystems Inc. v. Cruachem,
`Ltd., 772 F.Supp. 1458, 1467 (D.Del.1991) (holding
`that when a company has “done little more in Dela-
`ware than is necessary to comply with corporate for-
`malities, this activity is insufficient to meet the terms
`of subsection (c)(4).” Likewise, nothing about Orchid
`Pharma's incorporation of Orgenus, nor the ongoing
`relationship between these two companies, makes for
`continuous and systematic contacts between Orgenus
`and Delaware.
`
`*8 The other “contacts” Plaintiffs identify be-
`tween Defendants and Delaware are also inadequate,
`individually as well as collectively. Orchid India's
`purchases of analytic services from Quest, a Dela-
`ware company located in Delaware, as well as its
`agreements to have Delaware companies distribute its
`generic drugs, are inadequate to warrant a finding of
`general jurisdiction. See, e.g., Helicopteros, 466 U.S.
`at 418 (“[W]e hold that mere purchases, even if oc-
`curring at regular intervals, are not enough to warrant
`a State's assertion of in personam jurisdiction over a
`nonresident corporation in a cause of action not re-
`lated to those purchase transactions.”); Glaxo, Inc. v.
`Genpharm Pharmas., Inc., 796 F.Supp. 872, 876 n. 8
`(E.D.N.C.1992) (no jurisdiction found despite a con-
`tract for analytical services concerning a drug unre-
`lated to the case); Merck & Co., Inc. v. Barr Labs.,
`Inc., 179 F.Supp.2d 368, 372, 375 (D.Del.2002)
`(holding in ANDA case that two licenses to sell
`
`products in Delaware, direct sales to Delaware phar-
`macy, contract for sale and distribution of $1.2 mil-
`lion of drug per month in Delaware, and substantial
`revenue generated in Delaware do not amount to sig-
`nificant contacts); Monsanto Co. v. Syngenta Seeds,
`Inc., 443 F.Supp.2d 636, 643-46 (D.Del.2006) (hold-
`ing that ownership of Delaware subsidiary, attending
`meeting in Delaware, final say over whether subsidi-
`aries would market accused product, and overlap of
`some officers and directors were insufficient con-
`tacts). The same is true of Orchid India's purchase of
`excipients and packaging materials from Delaware
`companies and its payments to Delaware companies
`for clinical trials.
`
`Likewise, while Orchid India chose Delaware
`law to govern its legal relationship with other com-
`panies, including Orgenus, Delaware courts have
`refused to base personal jurisdiction solely on the
`existence of such a choice of law provision, see, e.g.,
`Intellimark, Inc. v. Rowe, 2005 WL 2739500, at * 2
`(Del.Super.Ct. Oct.24, 2005), even when the Dela-
`ware choice of law provision was in a contract related
`to the plaintiff's cause of action, see Summit Investors
`II, L.P. v. Sechrist Indus., Inc., 2002 WL 31260989,
`at *4 (Del. Ch. Ct. Sept. 20, 2002). Plaintiffs assert
`that Orgenus has facilitated several distribution
`agreements between Orchid India and numerous
`Delaware entities to distribute Orchid India's prod-
`ucts throughout the United States, including Dela-
`ware. But if entering into such distribution agree-
`ments directly with a Delaware entity is not sufficient
`to establish general jurisdiction, then neither does
`facilitating such agreements. Finally, while Delaware
`sales of products other than that involved in the in-
`stant litigation might provide a basis for general ju-
`risdiction, see Eli Lilly and Co. v. Mayne Pharma
`(USA)
`Inc.,
`504
`F.Supp.2d
`387,
`393-95
`(S.D.Ind.2007), there is no evidence that either Or-
`chid India nor Orgenus has derived substantial reve-
`nues from sales in Delaware.
`
`*9 In sum, the record does not demonstrate con-
`tinuous and systematic contacts between Orchid India
`or Orgenus and Delaware. Plaintiffs have failed to
`meet their burden to establish general jurisdiction.
`
`2. Specific Jurisdiction
`Subsections (c)(1) and (c)(3) of the Delaware
`long-arm statute confer “specific” jurisdiction over a
`non-resident defendant. See, e.g., LaNuova, 513 A.2d
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-2 Filed 12/19/11 Page 9 of 14 PageID #: 550
`Page 8
`
`Not Reported in F.Supp.2d, 2009 WL 605745 (D.Del.)
`(Cite as: 2009 WL 605745 (D.Del.))
`
`at 768; Jeffreys, 784 F.Supp. at 151. “ ‘Specific’ ju-
`risdiction refers to the situation in which the cause of
`action arises out of or relates to the defendant's con-
`tacts with the forum,” Beverly Hills Fan, 21 F.3d at
`1562 n. 10; see also Boone, 724 A.2d at 1155.
`
`In particular, subsection (c)(1) applies where a
`defendant “[t]ransacts any business or perform