July 14, 2017

Case Name: Teva Pharms. USA, Inc. v. Sandoz Inc., Civ. No. 17-275(FLW), 2017 U.S. Dist. LEXIS 78002 (D.N.J. May 23, 2017) (Wolfson, J.)

Drug Product and U.S. Patent: Copaxone® (glatiramer acetate); U.S. Patent No. 9,155,775 (“the ’775 patent”)

Nature of the Case and Issue(s) Presented: Teva USA is a Delaware corporation with its principal place of business in Pennsylvania. Teva Ltd., Teva USA’s parent, is an Israeli company with its principal place of business in Israel. Teva Neuroscience is a Delaware corporation with its principal place of business in Kansas. Sandoz is a Colorado corporation with its principal place of business in New Jersey. Momenta is a Delaware corporation with its principal place of business in Massachusetts.

On Jan. 13, 2017, Teva filed its complaint in the District of New Jersey against Sandoz and Momenta because Sandoz filed an ANDA seeking approval to sell a generic version of Copaxone. Teva also filed cases in other districts asserting patents covering Copaxone. On Sept. 10, 2014, Teva filed the first such case in D. Del. (Sleet, J.). That case was later consolidated with similar suits that were subsequently filed by Teva against eight other entities. On Jan. 30, 2017, Judge Sleet found that “all asserted claims of the patents-in-suit are invalid as obvious.” On Dec. 19, 2016, while the consolidated action was pending, Teva filed another case in D. Del, naming as defendants Sandoz, Momenta, and others. Mylan and Sandoz filed counterclaims in that case, adding allegations regarding the ’775 patent. And on Jan. 25, 2017, Amneal filed a lawsuit in D. Del., seeking a declaratory judgment that the ’775 patent is invalid. Finally, on Feb. 2, 2017, after being voluntarily dismissed from the present action, Momenta brought a declaratory judgment action concerning the ’775 patent against Teva in D. Del.

On Jan. 26, 2017, Sandoz filed its motion to transfer to D. Del. As part of its motion, Sandoz argued that Momenta was a necessary and indispensable party to the action, and because the Court lacked personal jurisdiction over Momenta, the case had to be dismissed or transferred to D. Del., which had jurisdiction over all parties. Teva maintained that Momenta did not need to be a part of the litigation, because the effect of the ultimate decision on Momenta was immaterial, and Teva could obtain complete relief from Sandoz without Momenta’s participation. The court granted Sandoz’s motion to transfer.

Why Sandoz Prevailed: The court first found that the case could have been filed in D. Del. as the forum. Next, the court found that D. Del. was a more favored forum than the D.N.J. in terms of the private and public factors weighed in a § 1404 analysis. Here, D.N.J. was not the home forum of any of the Teva defendants. Additionally, the court found that the “operative facts of this case” occurred outside of D.N.J. Therefore, Teva’s choice of forum was accorded less weight. From the perspective of Sandoz, its forum preference was bolstered by the fact that Momenta was a Delaware corporation and several related method-of-manufacturing cases were currently pending before D. Del., involving the same parties and claims as the present case, including actions filed by Plaintiffs and Momenta. With regard to the remaining private interest factors, the court found that neither party provided evidence that litigation in D. Del. would be particularly inconvenient due to physical or financial circumstances, and that neither party had proffered evidence that its witnesses would be unavailable in either forum.

Next, the court found that many of the public interest factors were neutral. For example, because the case arose under a federal statute, a judgment entered in either district would be enforceable, a judge in either forum would be appropriately familiar with the applicable law, the relative administrative difficulty resulting from court congestion would be comparable between the two districts, and because this was a patent infringement lawsuit, neither D.N.J. nor D. Del. had a particular local interest in the dispute.

In sum, most of the analyzed Jumara factors were either neutral or slightly favored transfer to D. Del. And because several related method-of-manufacturing actions concerning infringement of the ’775 patent, involving the same parties were already pending in D. Del., that weighed heavily in favor of transfer.