Judge Sleet denies motion to transfer to Delaware a related case pending in D. Mass

Plaintiffs sued Merck alleging infringement of their patents covering their “biologic product” “for treatment of certain patients with melanoma or nonsmall-cell lung cancer.”  Bristol-Myers Squibb Co., et al. v. Merck & Co., Inc., et al., No. 14-1131-GMS, No. 15-560-GMS, 15-572-GMS (D. Del. Jul. 13, 2016).  A non-party filed an action in the District of Massachusetts challenging inventorship of the patents-in-suit.  Id. at 2.  The Massachusetts court directed plaintiffs to file a motion in this Court requesting this Court decide whether transfer of the Massachusetts case to Delaware was appropriate in light of the “likelihood of substantial overlap.”  Id.  Judge Sleet determined that transfer was not warranted.  As a threshold matter, the Massachusetts case could not have been brought in Delaware because the court could not exercise personal jurisdiction “over Japanese residents . . . to adjudicate [] inventorship claims in Delaware because the inventorship action does not arise out of the infringement claims against Merck or out of any purposeful activities of [the Japanese residents] in Delaware.”  Id. at 5.  “Ultimately, the power of a District Court under § 1404(a) to transfer an action to another district does not depend upon the wish or waiver of the defendant, but upon whether the transferee district was one in which the action ‘might have been brought’ by the plaintiff.  Hoffman v. Blaski, 363 U.S. 335, 342-44 (1960). Accordingly, because this court would not have had jurisdiction over [the Japanese residents], transfer may not occur under § 1404(a). Id. (reversing transfer where transferee court lacked personal jurisdiction over defendant).”  Id. at 9.

Bristol-Myers Squibb Co. v. Merck & Co., Inc., No. 14-1131-GMS


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