Monday, September 11, 2017

D. Delaware addresses Heartland venue issue in case involving BMS' Eliquis®

The Dustrict Court of Delaware noted:

On July 25, 2017, MPI moved to dismiss for improper venue under Federal Rule of Civil
Procedure 12(b)(3), contending that venue is not proper under either the residency or place of
business prongs of§ 1400(b).


Venue in a patent infringement action is governed solely and exclusively by the patent venue statute, 28 U.S.C. § 1400(b). See TC Heartland, 137 S. Ct. at 1516. The general venue statute, 28 U.S.C.
§ 1391(c), does not have any application in a patent case. See id. at 1521.
If the Court grants a Rule 12(b)(3) motion based on improper venue, the Court "shall
dismiss, or if it be in the interest of justice, transfer such case to any district or division in which
it could have been brought." 28 U.S.C. § 1406(a).

Generally, "it is not necessary for the plaintiff to include allegations in his complaint
showing that venue is proper." Great W Mining & Mineral Co. v. ADR Options, Inc., 434 F.
App'x 83, 86-87 (3d Cir. 2011). Hence, when confronted with a motion to dismiss for improper
venue, the Court may consider both the complaint and evidence outside the complaint. See 14D
Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017). The Court will accept any
venue-related allegations in the complaint as true, unless those allegations are contradicted by the
defendant's [*8] affidavits. See Bockman v. First Am. Mktg. Corp., 459 F. App'x 157, 158 n.l (3d
4While § 1406(a) authorizes the Court to either dismiss or transfer a suit brought in an improper venue, for simplicity this Opinion will refer to the improper venue motion as a "motion to dismiss."


Courts are not uniform in their views as to which party bears the burden of proof with
respect to venue. Some hold that a plaintiff must prove that venue is proper in its chosen district,
while others hold instead that a defendant must prove that such district is an improper venue. See
14D Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017) ("There are many
cases -predominantly, but not exclusively, from the Third and Fifth Circuits-:-- holding that the
burden is on the objecting defendant to establish that venue is improper, because venue rules are
for the convenience and benefit of the defendant.").

BRISTOL~MYERS SQUIBB COMPANY and PFIZER INC v, Mylan ["MPI"], 2017 U.S. Dist. LEXIS 146372 (11 Sept 2017)

See also Boston Scientific v. Cook, 2017 U.S. Dist. LEXIS 146126, also involving Heartland LLC v. Kraft Food Group Brands LLC, 137 S. Ct. 1514 (2017).

There was a post on 13 Sept 17 Frequent ANDA Filer May Have Regular and Established Place of Business in Delaware​

IPBiz notes additional text in the decision, which relied on Acorda, 817 F3d. 755:

In the Court's view, the best, most reasonable conclusion after Acorda is that an ANDA filer's future, intended acts must be included as part of the "acts of infringement" analysis for purposes of determining if venue is proper under the patent venue statute. In Acorda, the Federal Circuit plainly held that intended, planned, future acts that will occur in a district in the future (after FDA approval) are acts that must be considered now in determining whether an ANDA filer has sufficient contacts with that district right now to make Hatch-Waxman litigation in such a district appropriate from a jurisdictional perspective. See, e.g., id. at 760 ("[T]he minimum-contacts standard is satisfied by the particular actions Mylan has already taken — its ANDA filings — for the purpose of engaging in that injury-causing and allegedly wrongful marketing conduct in Delaware."). It follows, in the Court's view, that the same approach must apply in the context of a venue analysis: planned, future acts that the ANDA filer will take in this District must be considered now in determining whether venue is proper here. In the context of Hatch-Waxman, therefore, such future acts are properly considered part of the "acts of infringement" that "the defendant has committed" within the meaning of § 1400(b).

The conclusion of the case:

For the reasons stated above, the Court will deny without prejudice MPI's motion to dismiss for improper venue. MPI has committed acts of infringement in Delaware based on its submission of an ANDA to the FDA, with the intention and for the purpose of selling products in Delaware that would allegedly infringe BMS' patents. The Court is not yet able to determine whether MPI lacks a regular and established place of business in Delaware. Hence, the Court will permit venue-related discovery and allow MPI to renew its venue challenge after such discovery is completed.


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