Richards Layton & Finger

Senior Judge Sleet Denies Motion to Transfer BPCIA Actions

March 6, 2018

In Genentech, Inc. v. Amgen Inc., No. 17-1407-GMS (D. Del. Jan. 22, 2018), and related action, Senior Judge Sleet denied Amgen Inc.’s motion to transfer two BPCIA patent infringement actions brought by Genentech, Inc. and City of Hope (together, “Genentech”) to the Central District of California, where a declaratory judgment action filed by Amgen regarding the same controversy was then pending. Amgen sought transfer on grounds of convenience under 28 U.S.C. § 1404(a) and under the first-to-file rule.

Although Judge Sleet found that, under the Third Circuit’s transfer factors, Amgen’s choice of forum favored transfer, Genentech’s choice of forum weighed more heavily against transfer. Invoking a consideration cited in some transfer decisions, Amgen argued that Genentech’s choice of forum should carry little weight on the basis that Delaware was not the “home turf”—i.e., principal place of business—of either plaintiff. But Judge Sleet disagreed, and further noted that some decisions regard a plaintiff’s state of incorporation as its “home turf,” which was the case for one of the plaintiffs here.

The Court concluded that most of the remaining transfer factors were neutral or weighed against transfer. Because the balance of all the factors did not strongly favor transfer, Judge Sleet held that Amgen failed to carry its burden to show that a transfer for convenience was warranted.

Judge Sleet also concluded that the first-to-file rule did not apply because Amgen’s California action was anticipatory. Genentech had earlier sued Amgen in Delaware to seek relief for Amgen’s alleged failure under Section 351(l)(2) of the Biologics Price Competition and Innovation Act to disclose other information about the manufacture of the accused product. Judge Sleet dismissed that action on the basis that the disclosure dispute should be raised as part of a BPCIA patent infringement action. According to the Court, Amgen initiated a declaratory judgment action against Genentech in California while the parties were still exchanging information under the BPCIA. Finding no facts to suggest that Genentech had abandoned its intent to pursue its infringement claims in Delaware, Judge Sleet denied the motion to transfer as anticipatory.

Key Point: Although Senior Judge Sleet cited decisions from other district judges regarding the applicability of the “home turf” rule, he cautioned that the discussion should not “signal a change of view” from his oft-repeated reminder to litigants that there is no “law of the district.”