Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 1 of 16 PageID #: 8067
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
`
`GENENTECH, INC. and CITY OF HOPE,
`
`v.
`
`AMGEN INC.
`
`Plaintiffs,
`
`Defendant,
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civ. No. 17-1407-GMS
`Civ. No. 17-1471-GMS
`
`Michael P. Kelly, Esquire and Daniel M. Silver, Esquire of Mccarter & English, LLP,
`Wilmington, Delaware. Counsel for Plaintiffs Genentech, Inc. and City of Hope. Of Counsel
`for Plaintiff Genentech, Inc.: Paul B. Gaffney, Esquire, David I. Berl, Esquire, Thomas S.
`Fletcher, Esquire, Teagan J. Gregory, Esquire, and Jonathan S. Sidhu, Esquire of Williams &
`Connolly LLP, Washington, D.C.
`
`Melanie K. Sharp, Esquire and Jam es L. Higgins, Esquire of Young Conaway Stargatt & Taylor,
`LLP, Wilmington, Delaware. Counsel for Defendant Amgen Inc. Of Counsel: Siegmund Y.
`Gutman, Esquire of Proskauer Rose LLP, Los Angeles, California and Steven M. Bauer, Esquire
`of Proskauer Rose LLP, Boston, Massachusetts.
`
`MEMORANDUM OPINION
`
`Dated: January _1_l, 2018
`Wilmington, Delaware
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 2 of 16 PageID #: 8068
`
`I.
`
`INTRODUCTION
`
`Plaintiffs Genentech, Inc. and City of Hope (collectively, "Plaintiffs") have filed two patent
`
`infringement actions in this court against defendant Amgen Inc. ("Amgen") based on Amgen' s
`
`plans to commercialize Mvasi®, a biosimilar version of Genentech's anticancer medicine
`
`Avastin®. Pursuant to 28 U.S.C. § 1404(a), Amgen has moved to transfer these actions to the
`
`Central District of California, where its declaratory judgment action regarding the same
`
`controversy is pending. (Civ. No. 17-1407 at D.I. 11; Civ. No. 17-1471 at D.I. 13). 1 The court
`
`has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). For the reasons stated
`
`below, the motion is denied.
`
`II.
`
`BACKGROUND
`
`Genentech asserts that Amgen's Mvasi® infringes on 20 patents it owns exclusively, 2
`
`patents it co-owns with City of Hope, and 2 patents it licenses exclusively with the sole right to
`
`enforce.
`
`(D.I. 2 iii! 30-31). Genentech is a Delaware corporation with its principal place of
`
`business in San Francisco, California. (Id. at if 19-21). City of Hope is a California nonprofit
`
`organization with its principal place of business in Duarte, California. (Id.). Amgen is a Delaware
`
`corporation with its principal place of business in Thousand Oaks, California. (Id.).
`
`Altogether, Plaintiffs have filed three lawsuits in this court over Amgen's plans to
`
`commercialize Mvasi®. In the first lawsuit, filed in February 2017, Plaintiffs sought a declaratory
`
`judgment that Amgen violated Section 262(!)(2)(A) of the Biologics Price Competition and
`
`Because the parties make essentially identical arguments in each case, all cites hereinafter
`are to the docket for Civ. No. 17-1407 unless stated otherwise.
`
`1
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 3 of 16 PageID #: 8069
`
`Innovation Act ("BPCIA") by producing only its Abbreviated Biologic License Application
`
`("aBLA") and no other information that described "the process or processes used to manufacture
`
`the biological product that is the subject of such application." (Civ. No. 17-165, D.I. 24 at 1-2
`
`(quoting 42 U.S.C. § 262(l)(2)(A)). The BPCIA sets forth a "carefully calibrated scheme"
`
`requiring the "reference product sponsor" (i.e., Plaintiffs) and the "applicant" (i.e., Amgen) to
`
`disclose and exchange information in furtherance of "preparing to adjudicate, and then
`
`adjudicating, claims of infringement." Sandoz, Inc. v. Amgen, Inc., 137 S. Ct. 1664, 1670 (2017).
`
`Thus, Plaintiffs alleged that Amgen was not complying with the steps in the BPCIA's scheme,
`
`colloquially referred to as the "patent dance." (D.I. 24 at 1). Under the BPCIA, the patent dance
`
`ends with the reference product sponsor, not the applicant, bringing claims as part of an
`
`"immediate patent infringement action." 42 U.S.C. § 262(/)(6).
`
`Amgen moved to dismiss Plaintiffs' declaratory judgment action as procedurally improper
`
`in light of Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015). (Civ. No. 17-165 at D.I.
`
`11 ). In Sandoz, the Federal Circuit held that any alleged non-compliance with Section 262(l)(2)(A)
`
`should be addressed as part of the "immediate patent infringement action" contemplated by the
`
`BPCIA or by a declaratory judgment action pursuant to 42 U.S.C. § 262(l)(9)(C). 2 794 F.3d at
`
`1357. The court agreed with Amgen and dismissed the case. (Civ. No. 17-165 at D.I. 16).
`
`Thereafter, the parties continued the patent dance. (D.I. 24 at 2). Plaintiffs identified 27
`
`patents they reasonably believed could be asserted against Amgen, exchanged contentions with
`
`Amgen regarding those patents, and then met with Amgen, sometime in September 2017, to
`
`Section 262(l)(9)(C) allows the reference product sponsor to bring an action "for a
`2
`declaration of infringement, validity, or enforceability of any patent that claims the biological
`product or a use of the biological product." 42 U.S.C. § 262(1)(9)(C)
`
`2
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 4 of 16 PageID #: 8070
`
`conduct "good faith negotiations" over which of the 27 patents to include in their "immediate
`
`patent infringement action." (Id. at 2-3). Plaintiffs proposed including all of the listed patents
`
`save two. (Id.).
`
`Section 262(1)(5) of the BPCIA expects the applicant to either agree or disagree with the
`
`reference product sponsor's proposed list of patents before the reference product sponsor files its
`
`"immediate patent infringement action." 42 U.S.C. § 262(1)(5). Amgen did not respond to
`
`Plaintiffs' proposal. (D.1. 24 at 2-3). Instead, on October 6, 2017, Amgen filed a declaratory
`
`judgment action in the Central District of California asserting claims of non-infringement,
`
`invalidity, and unenforceability that e_ssentially mirrored the claims Plaintiffs had proposed. (Id.
`
`at 2). Plaintiffs responded by filing their complaint in Civ. No. 17-1407 a few hours later. (Id.).
`
`That same day, after filing the declaratory judgment action, Amgen told Plaintiffs that their
`
`"immediate patent infringement action" should include all of the listed patents.
`
`(Id. at 3).
`
`According to Plaintiffs, this communication satisfied Amgen's obligations under Section 262(1)(5)
`
`and triggered Plaintiffs' thirty-day deadline to file their "immediate patent infringement action."
`
`(Id. (citing 42 U.S.C. § 262(1)(6)). Plaintiffs filed their complaint in Civ. No. 17-1471 twelve days
`
`later.
`
`III.
`
`STANDARD OF REVIEW
`
`Under 28 U.S.C. § 1404(a), a district court has "broad discretion to determine, on an
`
`individualized, case-by-case basis," whether or not "to transfer any civil action to any other district
`
`or division where it might have been brought." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883
`
`(3d Cir. 1995). The burden of establishing the need for transfer rests with the movant. Id. at 879.
`
`3
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 5 of 16 PageID #: 8071
`
`IV. DISCUSSION
`
`Amgen makes two arguments in support of its motions to transfer. First, the Jumara factors
`
`that traditionally guide the court's analysis on a motion to transfer weigh heavily in its favor. (D.I.
`
`11 at 2 (citing Jumara, 55 F.3d at 879-80)). Second, transfer is warranted under the first-to-file
`
`rule. (Id. at 5). Each of these arguments will be addressed in tum.
`
`A.
`
`The Jumara Factors.
`
`In deciding a motion to transfer, the court traditionally employs a two-step inquiry. First,
`
`the court must determine whether the action could have been brought in the proposed transferee
`
`district. Endeavor MeshTech, Inc. v. Aclara Tech. LLC, 2015 WL 849211, at *1 (D. Del. Feb. 25,
`
`2015). If yes, then second, the court considers whether transfer would "best serve the interests of
`
`justice and convenience." Id. (quoting Smart Audio Techs., LLC v. Apple, Inc., 910 F. Supp. 2d
`
`718, 724 (D. Del. 2012)). The parties do not dispute that Plaintiffs' actions could have been
`
`brought in the Central District of California. Thus, the court will focus on the second step, whether
`
`transfer best serves the interests of justice and convenience. The analysis under the second step is
`
`guided by the private and public interest factors identified by the Third Circuit in Jumara.
`
`1.
`
`The Private Interest Factors
`
`The private interest factors are: (1) plaintiffs choice of forum, (2) defendant's choice of
`
`forum, (3) whether the claim arose elsewhere, ( 4) the convenience of the parties, ( 5) the
`
`convenience of the witnesses, and (6) the location of books and records. Jumara, 55 F.3d at 879.
`
`Each of these factors will be discussed in more detail below.
`
`a.
`
`Plaintiffs' Choice of Forum
`
`"Generally, a plaintiffs choice of forum is entitled to 'paramount consideration,' and
`
`should not lightly be disturbed." Mallinckrodt, Inc. v. E-Z-Em Inc., 670 F. Supp. 2d 349, 356-57
`
`4
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 6 of 16 PageID #: 8072
`
`(D. Del. 2009) (quoting Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970)). Amgen
`
`argues that Plaintiffs' choice of forum is due little weight because Delaware is not their "home
`
`turf." (D.I. 11 at 6). For several reasons, the court disagrees.
`
`First, other judges in this District have carefully analyzed the history and development of
`
`the so-called "home-turf rule" and concluded that it "has no independent significance as to the
`
`overall Jumara balance of convenience analysis, nor to the analysis regarding this first Jumara
`
`private interest factor." Elm 3DS Innovations LLC v. SK Hynix Inc., 2015 WL 4967139, at *4 n.
`
`6 (D. Del. Aug. 20, 2015). "[T]he original discussion of a 'home turf rule' in prior cases from this
`
`District simply articulated the commonsense proposition that the weaker the connection between
`
`the forum and the plaintiff (or the lawsuit), the easier it will be for the defendant to show that the
`
`balance of convenience tips in its favor." Tessera, Inc. v. Broadcom Corp., 2017 WL 1065865, at
`
`*4 n. 6 (D. Del. Mar. 21, 2017). The rule "was never meant to apply so as to automatically lessen
`
`the weight afforded to the first Jumara private interest factor (if this District is not a plaintiffs
`
`'home turf), or to automatically increase the weight given to the factor (if this District is the
`
`plaintiffs 'home turf)." Id.
`
`Second, there is a line of cases from this District that construe a plaintiffs "home turf' to
`
`include its state ofincorporation, which for Genentech is Delaware. See, e.g., Intellectual Ventures
`
`I LLC v. Altera Corp., 842 F. Supp. 2d 744, 754 (D. Del. 2012); In re Mobile Telecomm. Tech.,
`
`LLC, 243 F. Supp. 3d 478, 485-86 (D. Del. 2017). Finally, even in cases where Delaware is not
`
`considered a plaintiffs "home turf," a plaintiffs choice of forum is still accorded "substantial
`
`weight" if that choice relates to the plaintiffs "legitimate, rational concerns." Waste Distillation
`
`5
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 7 of 16 PageID #: 8073
`
`Tech., Inc. v. Pan Am. Resources, Inc., 775 F. Supp. 759, 764 (D. Del. 1991). Our court3 has
`
`repeatedly found that it is rational and legitimate for a plaintiff to sue in the defendant's state of
`
`incorporation, which for Amgen is Delaware. Elm JDS, 2015 WL 4967139, at *4. Considering
`
`the foregoing, the court finds no reason to discount Plaintiffs' choice of forum. This factor weighs
`
`against transfer.
`
`b.
`
`Defendant's Choice of Forum.
`
`When a defendant prefers to litigate in "the District where it operates its principal place of
`
`business and headquarters," as Amgen does, "[t]his factor weighs in favor of transfer." Blackbird
`
`Tech LLC v. TujJStuff Fitness, lnt'l, Inc., 2017 WL 1536394, at *4 (D. Del. Apr. 27, 2017).
`
`Nevertheless, a defendant's preferred venue "is not sufficient to displace the plaintiffs own choice
`
`of venue." CNH Am. LLC v. Kinzenbaw, 2009 WL 3737653, at *2 (D. Del. Nov. 9, 2009); see
`
`also Intellectual Ventures, 842 F. Supp. 2d at 755 (stating that a defendants' choice of forum is
`
`"not given the same weight" as a plaintiffs choice of forum). Accordingly, this factor weighs in
`
`favor of transfer, but not as strongly as Plaintiffs' choice of forum weighs against transfer.
`
`c.
`
`Where the Claims Arose
`
`"[A]s a matter of law, a claim for patent infringement arises wherever someone has
`
`committed acts of infringement, to wit, 'makes, uses, offers to sell, or sells any patented invention'
`
`without authority." Cellectis S.A. v. Precision Biosciences, Inc., 858 F. Supp. 2d 376, 381 (D. Del.
`
`2012) (quoting 35 U.S.C. § 271(a)). Therefore, when the defendant operates on a national or
`
`3
`This court has been consistently heard over time to repeat the well-known precept that
`"[t]here is no such thing as 'the law of the district."' Zebroski v. Pierce, 2016 WL 697614, at *6
`(D. Del. Feb. 22, 2016) (quoting Threadgill v. Armstrong World Indus. Inc., 928 F.2d 1366, 1371
`(3d Cir.1991)). This ruling does not signal a change of view.
`
`6
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 8 of 16 PageID #: 8074
`
`global scale, as Amgen does, this factor is neutral. Smart Audio, 910 F. Supp. 2d at 730-31. At
`
`the same time, however, there is a line of cases stating that infringement claims have "deeper roots"
`
`in the forum where the accused products are developed, designed, and manufactured. See, e.g.,
`
`Linex Tech., Inc. v. Hewlett-Packard Co., 2013 WL 105323 (D. Del. Jan. 7, 2013); Smart Audio,
`
`910 F. Supp. 2d at 730. Here, the development and design of Amgen's Mvasi® primarily occurred
`
`in Thousand Oaks, California, but the manufacture occurred throughout the United States. (D.I.
`
`24 at 7). Accordingly, this factor weighs only slightly in favor of transfer.
`
`d.
`
`Convenience of the Parties
`
`The court traditionally weighs the convenience of the parties by considering the parties'
`
`physical location and relative ability to bear litigation-related travel costs. Fuisz Pharma LLC v.
`
`Theranos, Inc., 2012 WL 1820642, at *12 (D. Del. May 18, 2012). Here, all of the parties are
`
`physically located in California, and two of the parties are located in the Central District of
`
`California. Nevertheless, Amgen is a "large, well-funded research organization[]." (D.I. 11 at 8;
`
`see also D.I. 24 at 9 (Amgen is "the largest biotechnology company in the world")). When the
`
`defendant "is a corporation with global reach and annual revenues in the billions," it is reasonable
`
`to conclude that "litigating in Delaware will not impose an undue financial burden." Bristol-Myers
`
`Squibb Co. v. Merck & Co., 2014 WL 12531129, at *l n. 1 (D. Del. Apr. 29, 2014). In addition,
`
`Amgen' s allegations of inconvenience are contradicted by the fact that it voluntarily chose to
`
`incorporate in Delaware. "[A]bsent some showing of a unique or unexpected burden, a company
`
`should not be successful in arguing that litigation in its state of incorporation is inconvenient."
`
`ADE Corp. v. KLA-Tencor Corp., 138 F. Supp. 2d 565, 573 (D. Del. 2001). Weighing all of these
`
`facts together, the court finds that this factor is neutral.
`
`7
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 9 of 16 PageID #: 8075
`
`e.
`
`Convenience of the Witnesses
`
`The "convenience of the witnesses" factor carries weight only to the extent that "a witness
`
`actually will refuse to testify absent a subpoena." Smart Audio, 910 F. Supp. 2d at 732; see also
`
`Jumara, 55 F.3d at 879 (requiring the witnesses to be unavailable for trial in one of the fora). In
`
`addition, "witnesses who are employed by a party carry no weight," because "each party is able,
`
`indeed, obligated to procure the attendance of its own employees for trial." Affymetrix, Inc. v.
`
`Synteni, Inc., 28 F. Supp. 2d 192, 203 (D. Del. 1998).
`
`This early in the proceedings, it is difficult to know with any certainty who will be called
`
`as a witnesses at trial. Amgen submitted a list of last known locations for the 103 inventors
`
`identified on the patents-at-issue. (D.I. 29-1, Ex. I). After careful consideration, the court finds
`
`that the list does not provide great weight in favor of transfer. The current location of 5 of the
`
`inventors is unknown; 24 of the inventors reside in neither California nor Delaware and are,
`
`therefore, outside the subpoena power of either district; and 3 7 of the inventors are still employed
`
`by either Genentech or City of Hope. This leaves 37 potential non-party witnesses. Thirty of those
`
`potential non-party witnesses are located within California, but more than 100 miles from the
`
`Central District of California and, therefore, cannot be compelled to attend trial if, as a result, they
`
`would "incur 'substantial expense.'" Fed. R. Civ. P. 45 Advisory Committee Notes to 2013
`
`Amendment. Thus, there are only 7 inventors, out of 103 total, that are clearly within the subpoena
`
`power of Central District of California, but not the subpoena power of this court. In addition,
`
`Amgen claims that "[t]he vast majority of scientists and other individuals involved with and
`
`knowledgeable about Amgen' s development of [Mvasi®] ... work at the company's headquarters
`
`in Thousand Oaks, [California]," suggesting that several likely trial witnesses are Amgen
`
`8
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 10 of 16 PageID #: 8076
`
`employees whose presence it is expected to procure. (D.I. 13 ~ 10). In light of the above, this
`
`factor weighs only slightly in favor of transfer.
`
`f.
`
`Location of Books and Records
`
`The location of books and records is relevant "only to the degree that [the] books and
`
`records cannot be produced in Delaware." Cornerstone Therapeutics Inc. v. Exela Pharma
`
`Sciences, LLC, 2014 WL 12597625, at *2 (D. Del. June 16, 2014). The bulk of the relevant
`
`documents are most likely located in California, where Amgen, as the accused infringer, is
`
`headquartered. Amgen, however, has not articulated any reason why those books and records
`
`cannot be produced in Delaware. Our c0urt has repeatedly recognized that "virtually all businesses
`
`maintain their books and records in electronic format readily available for review and use at any
`
`location." C. R. Bard, Inc. v. Angiodynamics, Inc., 156 F. Supp. 3d 540, 546 (D. Del. 2016).
`
`Accordingly, this factor weighs against transfer.4 See Cornerstone, 2014 WL 12597625, at *2
`
`(finding that the books and records factor weighed against transfer where the defendant "has not
`
`explained why these documents could not be transmitted electronically or otherwise made
`
`available in Delaware").
`
`4
`The court recognizes that, in Genentech, a Texas district court considered the books and
`record factor neutral, given the advances in electronic storage and transmission, and was reversed
`by the Federal Circuit. See Genentech, 566 F.3d at 1345-46. Genentech, however, is a Federal
`Circuit opinion interpreting Fifth Circuit transfer law and, therefore, is not binding on this court.
`Peregrine Semiconductor Corp. v. RF Micro Devices, Inc., 2012 WL 2068728, at *8 (S.D. Cal.
`June 8, 2012); see also Intellectual Ventures, 842 F. Supp. 2d at 761 (explaining that the Federal
`Circuit reviews motions to transfers "under the law of the relevant regional circuit" and noting that
`transfer law under the Third Circuit differs from the Fifth Circuit in "significant respects").
`
`9
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 11 of 16 PageID #: 8077
`
`2.
`
`The Public Interest Factors
`
`The public interest factors include: (1) 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; (5) the public policies of the fora; and (6) and the familiarity
`
`of the trial judge with the applicable state law in diversity cases. Jumara, 55 F.3d at 879-80.
`
`Amgen addressed only two of the six factors: practical considerations and court congestion. (DJ.
`
`11). Accordingly, the court will weigh only those two factors and consider the remaining,
`
`unaddressed factors neutral.
`
`a.
`
`Practical Considerations
`
`Amgen argues, in a throwaway sentence, that transfer is warranted, because Plaintiffs are
`
`"familiar" with the Central District of California after participating in over ten different actions
`
`there involving some of the same patents asserted here. (D.I. 11at9-IO). Section 1404(a) requires
`
`"individualized, case-by-case consideration of convenience and fairness." Genentech, 566 F.3d at
`
`1346 (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). Thus, unrelated cases have no
`
`weight in the transfer analysis. See Id (finding clear error where district court relied on
`
`defendant's prior unrelated lawsuits in the transfer analysis); Memory Integrity, LLC v. Intel Corp.,
`
`2015 WL 632026, at *3 (D. Del. Feb. 13, 2015) (finding "unrelated cases ... irrelevant to the
`
`transfer analysis"). At the same time, our courts have recognized that efficiencies can be gained
`
`when all related cases are litigated together. Micro Design LLC v. Asus Computer Int'!, 2015 WL
`
`2089770, at *IO (D. Del. May 1, 2015). Accordingly, transfer is generally appropriate "where
`
`related litigation in a transferee forum involves the same parties, similar technologies, and a
`
`common field of prior art." Mallinckrodt, 670 F. Supp. 2d at 357-58.
`
`IO
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 12 of 16 PageID #: 8078
`
`Amgen did not identify any similarities between this litigation and the ten actions it
`
`referenced. Because it is Amgen's burden to show that transfer is warranted, the court finds it
`
`difficult to give this throwaway argument any weight. Nevertheless, in attempting to refute
`
`Amgen's assertion, Plaintiffs provided the details Amgen did not.
`
`(See D.I. 24 at 12-14). It
`
`appears that Judge Pfaelzer and Judge Wu of the Central District of California have presided over
`
`litigation involving two of the same patents-at-issue here. (Id. at 13). None of those ten actions,
`
`however, involved Amgen or its accused product, Mvasi®. (Id. at 12-13). In addition, Judge
`
`Pfaelzer has, regrettably, since passed away and the single case overseen by Judge Wu was
`
`resolved before entry of a final claim construction order or any other substantive order. (Id.).
`
`Under those circumstances, it is difficult to determine if Judge Wu gained any more familiarity
`
`with the parties and patents-at-issue than this court did when it presided over Plaintiffs' earlier
`
`declaratory judgment action against Amgen. It is likely that both courts are in a similar position,
`
`because "a trial judge may develop a familiarity or expertise over a given patented technology over
`
`time," but "this benefit is realized only after the cases have progressed past the preliminary stages."
`
`Endeavor, 2015 WL 849211, at *5. Considering all of the above, the court finds that Amgen has
`
`not carried its burden of demonstrating that the existence of ten prior actions in the Central District
`
`of California involving only a few of the patents-at-issue here, and not involving Amgen, is a
`
`practical consideration weighing in favor of transfer.
`
`Next, Amgen argues that transfer is warranted, because the California action includes a
`
`few additional patents not asserted here.
`
`(See D.I. 11 at 9 (stating that the California action
`
`includes 3 additional patents); Civ. No. 17-1471, D.I. 13 at 10 (stating that the California action
`
`includes 2 additional patents)). The court is not convinced that the presence of a few additional
`
`patents in the California action is a practical consideration that weighs in favor of transfer.
`
`11
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 13 of 16 PageID #: 8079
`
`Plaintiffs previously took the position that "under the BPCIA, if Genentech fails to list a patent, it
`
`could be barred permanently from asserting that patent against Amgen's biosimilar [Mvasi®]."5
`
`(Civ. No. 17-165, D.I. 1at2). Because Plaintiffs have filed their immediate patent infringement
`
`action without including those additional patents, it appears that those missing patents cannot lead
`
`to an actual controversy. As a result, there is doubt that the missing patents could be subject to a
`
`declaratory judgment action, as Amgen seeks in California. "For a court properly to exercise
`
`declaratory judgment jurisdiction, there must exist 'a substantial controversy, between parties
`
`having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.'" Juno Therapeutics, Inc. v. Kite Pharma, Inc., 2017 WL 2559735, at * 1
`
`(D. Del. June 13, 2017) (quoting Maryland Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273
`
`(1941)). In summary, the court finds this factor to be neutral.
`
`b.
`
`Court Congestion
`
`Amgen presented statistics regarding the percentage increase in caseload for each district,
`
`the median time to disposition of civil cases, and the percentage of pending civil cases over three
`
`years old. (D.I. 11 at 10). Plaintiffs presented statistics showing that the time-to-trial for patent
`
`cases is shorter in the District of Delaware than in the Central District of California. (D .I. 25-1,
`
`Ex. 6 at 22). In addition, on a per-judgeship basis, the Central District of California has had, in
`
`recent years, more total actions, more civil actions, and more weighted filings than the District of
`
`5
`Plaintiffs' assertion was based on 35 U.S.C. § 271(e)(6)(C) which states: "The owner of a
`patent that should have been included in the list described in section 351(1)(3)(A) of the Public
`Health Service Act, including as provided under section 351(1)(7) of such Act for a biological
`product, but was not timely included in such list, may not bring an action under this section for
`infringement of the patent with respect to the biological product." (See Civ. No. 17-165, D.I. 1 at
`~ 5).
`
`12
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 14 of 16 PageID #: 8080
`
`Delaware. (Id., Ex. 8). The court finds Plaintiffs' statistics to be a more illuminating measure of
`
`court congestion. Amgen appears to agree, because it abandoned any argument regarding court
`
`congestion in its reply brief. (See D.I. 28). Accordingly, this factor weighs against transfer.
`
`3.
`
`Weighing the Jumara Factors Together
`
`In summary, Amgen's choice of forum weighs in favor of transfer, but not as strongly as
`
`Plaintiffs' choice of forum weighs against transfer. Only two other factors weigh in favor of
`
`transfer, but only slightly: where the claims arose and the convenience of the witnesses. The
`
`remaining factors were neutral or weighed against transfer. "Unless the balance is strongly in
`
`favor of a transfer, the plaintiffs choice of forum should prevail." ADE Corp., 138 F. Supp. 2d at
`
`567--68; see also Intellectual Ventures, 842 F. Supp. 2d at 750-51 ("[T]ransfer will be denied if
`
`the factors are evenly balanced or weigh only slightly in favor of the transfer." (quoting
`
`Angiodynamics, Inc. v. Vascular Solutions, Inc., 2010 WL 3037478, at *2 (D. Del. July 30,
`
`2010))). Because the Jumara factors do not weigh strongly in favor of transfer, Amgen has not
`
`carried its burden of demonstrating that transfer is warranted under those factors.
`
`B.
`
`The First-to-File Rule
`
`Amgen argues that the motion to transfer should be granted under the first-to-file rule,
`
`because the California action was first-filed and involves the same controversy. (D.I. 11 at 5). In
`
`patent cases, "a later-filed action involving the same controversy should be dismissed, transferred,
`
`or stayed in favor of the first-filed action," Nexans Inc. v. Belden Inc., 966 F. Supp. 2d 396, 403
`
`(D. Del. 2013), "unless considerations of judicial and litigant economy, and the just and effective
`
`disposition of disputes, require otherwise." Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937
`
`13
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 15 of 16 PageID #: 8081
`
`(Fed. Cir. 1993), rev 'd on other grounds, Wilton v. Seven Falls Co., 515 U.S. 277 (1995). 6
`
`Plaintiffs raise several arguments as to why the first-to-file rule should not apply here, the most
`
`salient being that the California action was anticipatory.
`
`(D.I. 24 at 15-20).
`
`"[A] suit is
`
`'anticipatory' for the purposes of being an exception to the first-to-file rule if the plaintiff in the
`
`first-filed action filed suit on receipt of specific, concrete indications that a suit by the defendant
`
`was imminent." Woodbolt Distrib., LLC v. Natural Alts. Int'!, Inc., 2013 WL 247041, at *4 (D.
`
`Del. Jan. 23, 2013).
`
`At the time Amgen filed its California action, it had already been sued by Plaintiffs in this
`
`court based on an alleged failure to make disclosures about Mvasi® required by the BPCIA. (Civ.
`
`No. 17-165, D.I. 24 at 1-2). Those disclosures were a step in the patent dance Plaintiffs had to
`
`follow in order to bring any patent infringement action against Mvasi®. The court dismissed that
`
`lawsuit as essentially premature, because any claims regarding Amgen's compliance with the
`
`patent dance needed to be brought as part of Plaintiffs' "immediate patent infringement action."
`
`(Id. at D.I. 16). Amgen has not pointed to any facts suggesting that Plaintiffs abandoned their
`
`interest in pursuing an immediate patent infringement action against Mvasi® after their lawsuit
`
`was dismissed. In fact, Plaintiffs continued to participate in the patent dance, and were waiting
`
`for a response from Amgen, when Amgen filed its California action. (D.1. 24 at 2-3). Thus, the
`
`court finds that the California action was anticipatory.
`
`An anticipatory lawsuit does not lose its priority under the first-to-file rule, unless there are
`
`additional convenience factors that do not favor a transfer. Mitek Sys., Inc. v. United Serv. Auto.
`
`6
`Application of the first-filed rule in patent cases is governed by Federal Circuit law. See
`Elecs.for Imaging, Inc. v. Coyle, 394F.3d1341, 1345-46 (Fed. Cir. 2005);Abbott Labs. v. Roxane
`Labs., Inc., 2013 WL 2322770, at *14 n.13 (D. Del. May 28, 2013).
`
`14
`
`

`

`Case 1:17-cv-01471-GMS Document 56 Filed 01/22/18 Page 16 of 16 PageID #: 8082
`
`Ass'n, 2012 WL 3777423, at *3 (D. Del. Aug. 30, 2012). Having already found above that the
`
`Jumara factors weigh against transfer, the court concludes that there are convenience factors, in
`
`addition to the anticipatory nature of the California action, that weigh against giving the California
`
`action priority status. Accordingly, the court will not apply the first-to-file rule in favor of transfer.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Amgen's motions to transfer (Civ. No. 17-1407 at D.I. 11; Civ.
`
`No. 17-1471 at D.I. 13) are denied. An appropriate order will be entered.
`
`15
`
`