Vanda Pharmaceuticals Inc. v. Inventia healthcare PVT. Ltd., C.A. No. 15-632-GMS (D. Del. Sept. 22,...

8/20/2019 Vanda Pharmaceuticals Inc. v. Inventia healthcare PVT. Ltd., C.A. No. 15-632-GMS (D. Del. Sept. 22, 2015)

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IN THE UNITED STATES DISTRICT COURT FOR

THE DISTRICT OF DELA WARE

VANDA PHARMACEUTICALS INC., )

Plaintiff, )

v

INVENTIA HEALTHCARE PVT. LTD., )

Defendant. )

C.A. No. 15-362-GMS

ORDER

WHEREAS, on May 5, 2015, the plaintiff Vanda Pharmaceuticals Inc. ( Vanda ) brought

this action for infringement of U.S. Patent No. 8,586,610 (the ' 610 Patent ) and declaratory

judgment against defendant Inventia Healthcare Pvt. Ltd. ( Inventia ) (D.I. 1 ;

WHEREAS, presently before the comi is Inventia's motion to dismiss or transfer filed

on June 29, 2015 (D.I. 7). Inventia argues th t (1) there is no basis for the court to exercise

personal jur isdiction over Inventia under the Delaware Long-Arm Statute, (D.I.

8.

at 4--5 , (2)

there is no basis for the court to exercise personal jurisdict ion

b sed

upon Federal Rule of

Civil Procedure 4(k)(2),

id

at 9-10, and (3) exercising personal jurisdiction over Inventia

would violate the Due Process Clause.

Id

at 5-9. In the alternative, Inventia argues that the

case should be transferred to the Northern District of West Virginia. Id at 10.

WHEREAS, in response, Vanda argues that (1) the court has personal jurisdiction over

Inventia under the Delaware Long-Arm Statute by filing an ANDA application and under the

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dual jurisdiction theory, (D.I. 12 at 14-16), (2) the court has personal jurisdiction over Inventia

under the Federal Long-Arm Statute, id. at 16-18, and (3) the court has personal jurisdiction

over Inventia under the Federal Due Process Clause. Id. at 7-14. In addition, Vanda asserts that

there is no basis to transfer this case to West Virginia. Id. at 18-20.

The court finds that Inventia has alleged sufficient facts to establish personal jurisdiction.

Specific jurisdiction exists where the defendant has 'purposefully directed' his activities at

residents o the forum, and the litigation results from alleged injuries that 'arise out o or relate

to' those activities. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472-73 (1985); see also

Nuance Commc

ns,

Inc.

v.

Abbyy Software House,

626 F.3d 1222, 1231 (Fed. Cir. 2010) (citing

Akra Corp.

v.

Luker,

45 F.3d 1541, 1545-46 (Fed. Cir. 1995)). This court has held that the act

o filing an ANDA application that potentially infringes the patent o a Delaware entity provides

sufficient minimum contacts with the state o Delaware under a specific jurisdiction analysis.

AstraZeneca AB v. Mylan Pharm., Inc., 72 F Supp. 3d 549, 559-60 (D. Del. 2014) motion to

certify appeal granted sub nom. Astrazeneca

AB

v. Aurobindo Pharma Ltd.,

No. CV 14-664-

GMS, 2014 WL 7533913 (D. Del. Dec. 17, 2014).

Here, Inventia filed an ANDA application to make generic iloperidone and certified that

it would not wait until the '610 Patent expires. Even though Inventia did not send a Paragraph

IV certification to Vanda in Delaware, as this court emphasized in

AstraZeneca,

jurisdiction

arises from the act o filing an ANDA application, triggering the patent holder's forty-five days

to

initiate a lawsuit.

Id.

at *7. Having found that specific jurisdiction exists under the Delaware

Long-Arm Statute, the court will not address Vanda's dual jurisdiction argument and concludes

that it need not rely on a Federal statutory basis for jurisdiction. See Synthes US.A.) v.

G M

Dos Reis

Jr. Ind.

Com de Equip. Medico,

563 F.3d 1285, 1295-96 (2009) (citing advisory

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committee notes to the 1993 amendment establishing Rule 4(k)(2)) (explaining that Rule 4(k)(2)

was adopted to provide a forum for federal claims in situations where a foreign defendant lacks

substantial contacts with any single state).

Furthermore, the court finds that the exercise of urisdiction does not violate the Federal

Due Process Clause. The court's exercise of urisdiction must comport with traditional notions

of

fair play and substantial justice.

Int l Shoe Co. v. State o Wash., Office

o

Unemployment

Comp. Placement,

326 U.S. 310, 316 (1945) (citing

Milliken v. Meyer, 311U.S.457

463

(1940)). Vanda would be substantially burdened

if

forced to bring a lawsuit against any ANDA

filer challenging the '610 patent in the location selected by the defendant.

AstraZeneca AB,

72

F

Supp. 3d 549 at 560. Thus, considerations of fair play and substantial justice also justify the

exercise of jurisdiction.

Inventia alternatively moves for a transfer of this action to the Northern District

of

West

Virginia. The statutory authority for transferring venue is§ 1404(a) ofTitle 28, which provides:

For the convenience

of 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. 28

U.S.C. § 1404(a). Courts in the Third Circuit apply the public and private interest factors

outlined in Jumara

v.

State Farm Ins.

Co.

55 F.3d 873 (3d Cir. 1995).

With regard to the private interests, courts consider: (1) the plaintiff's choice

of

forum; (2)

the defendant's preferred forum; (3) where the claim arose; (4) the convenience of the

parties; (5) the convenience of the witnesses, but only to the extent that the witnesses may

be unavailable for trial in one of the fora; and (6) the location of books and records, but

again, only to the extent that they may be unavailable in one

of

the fora. With regard to the

public interests, courts consider: (1) the enforceability of the judgment; (2) practical

considerations that could make the trial easier, quicker, or less expensive; (3) court

congestion; (4) local interest in the controversy; (5) public policies of the fora; and (6) the

trial judge's familiarity with the applicable state law.

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Pfizer Inc v Apotex Inc.

No. CIV.A. 08-CV-00948LD, 2009 WL 2843288, at *2 (D. Del. Aug.

13,

2009) (citing

Jumara

55 F.3d at 878-79). The burden of establishing the basis for transfer is

the movant's.

Jumara

55 F.3d at 879.

The first factor is neutral here. Vanda brought suits in this District and

in

the Northern

District

of

West Virginia. Vanda contends that the forum where they filed first should control.

However, it is this court's view that the first-filed rule does not apply where the plaintiff

brought identical suits to both districts.

See Pfizer

Inc

v Apotex Inc.

No. CIV.A. 08-CV-

00948LD, 2009

WL

2843288, at *3-4 (D. Del. Aug. 13, 2009). The second factor, the

defendant's preferred forum, weighs in favor

of

transfer. Because Vanda was injured in Delaware,

the third factor weighs against transfer. Convenience also weighs against transfer. While neither

entity maintains a principal place

of

business

in

Delaware, Vanda is already involved in litigation

regarding the '610 in this district. As a result, the witnesses are available here. Inventia fails to

demonstrate that the Northern District

of

Western Virginia is a more convenient location. Thus,

the court finds that the private interest factors weigh in favor of Delaware.

In terms

of

the public interest, since this action is a patent infringement case, local

interests are not implicated. See Magsil Corp.

v

Seagate Tech. No. 08-940, 2009 WL 1259043,

at

2

(D. Del. Apr. 30, 2009).

However,

practical considerations weigh heavily

against

transfer. A

related

case is currently being heard here involving the same patent and drug.

See

Vanda Pharmaceuticals et al v Roxane Laboratories Inc.

C.A. No. 13-1973 (GMS). Thus, it

would be easier, quicker, and less expensive to hear both cases here. Moreover, resolution

of

the

issues relating to the

610

patent in a single district would promote judicial economy and avoid

the possibility

of

inconsistent outcomes. Inventia fails to demonstrate a basis for transfer that

outweighs these interests.


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In sum, it is the court s view that Inventia is subject to specific jurisdiction in Delaware.

Vanda s cause

o

action arises out oflnventia s activities, which were purposefully directed at

Vanda in the state o Delaware. Principles o due process support this conclusion. For the

reasons discussed previously, the umara factors weigh against transfer o this case.

THEREFORE, IT IS HEREBY ORDERED THAT Inventia s Motion to Dismiss

the Complaint for Lack

o

Personal Jurisdiction or in the Alternative Motion to Transfer (D.I.

7 is DENIED.

Dated: September 1- 2015

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Vanda Pharmaceuticals Inc. v. Inventia healthcare PVT. Ltd., C.A. No. 15-632-GMS (D. Del. Sept. 22,...

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