Transfer motion based on "protective" second filing is denied
Pfizer Inc., et al. v. Sandoz Inc., Civil Action No.09-742-JJF, January 20, 2010.
Farnan, J. Defendant’s motion to transfer is denied. The Court reserves decision on Plaintiff’s motion to enjoin defendant from proceeding with its later filed suit in the District of Columbia.
Plaintiffs filed in Delaware alleging infringement of the '574 patent by an ANDA filing which sought permission to market a generic version of plaintiff's Caduet® product used to treat high blood pressure and high cholesterol. The next day plaintiffs filed suit against defendant in Colorado alleging the same cause of action. Defendant filed its Answer in the Colorado Action and asserted counterclaims which allege invalidity and non-infringement of the '574 patent, as well as three additional patents. A scheduling order has been issued in the Colorado Action. Defendant also filed a declaratory judgment action in Colorado seeking declarations of invalidity and non-infringement with regard to the same three additional patents. Defendant also filed its answer and counterclaims for declaratory relief in the Delaware Action. By its Delaware counterclaims, defendant seeks declaratory judgments of invalidity and non-infringement of the '574 patent only. Applying the Jumara factors, the Court concludes that transfer to the District of Colorado is not warranted. Defendant contends that plaintiffs' forum choice is entitled to little deference because plaintiffs filed almost identical suits in Delaware and Colorado. However, because the Hatch-Waxman Act is silent on whether a patent holder loses its right to sue if its suit is dismissed for lack of personal jurisdiction after the 45-day window to initiate suit has expired, plaintiff’s "protective" filing in Colorado the day after initiating suit here cannot be consider forum shopping. The other factors do not weigh way heavily in favor of transfer.
Next the Court considers plaintiff’s request to enjoin the Colorado Declaratory Judgment Action. Plaintiffs contend that the Delaware Action is the first-filed action, and that the claims raised by defendant in its Colorado Declaratory Judgment Action should have been raised as compulsory counterclaims in the Delaware Action. In response, Defendant contends that it was plaintiffs who chose to pursue a two-court strategy by filing a "protective" suit in the District of Colorado. Further, plaintiffs' motion is unnecessary and duplicative since motions to stay or transfer both the Colorado Action and the Colorado Declaratory Judgment Action have been filed in Colorado. The Court reserves decision on the pending Motion To Enjoin until the Colorado Court decides its pending transfer motions.
