Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 1 of 15 PageID #: 624
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 1:15-cv-00264-GMS
`
`)))))))))
`
`HELSINN HEALTHCARE S.A. and
`ROCHE PALO ALTO LLC,
`
`Plaintiffs,
`
`v.
`
`HOSPIRA, INC.,
`
`Defendant.
`
`OPPOSITION TO PLAINTIFFS’ MOTION TO STAY THE SECOND-FILED CASE IN
`THE DISTRICT OF DELAWARE
`
`PROCTOR HEYMAN ENERIO LLP
`
`Dominick T. Gattuso (# 3630)
`300 Delaware Avenue, Suite 200
`Wilmington, DE 19801
`(302) 472-7300
`dgattuso@proctorheyman.com
`
`Attorney for Defendant Hospira, Inc.
`
`OF COUNSEL:
`
`Sara Tonnies Horton
`JENNER & BLOCK LLP
`353 North Clark Street
`Chicago, IL 60654
`Telephone: (312) 840-7618
`shorton@jenner.com
`
`Dated: December 28, 2015
`
`

`
`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 2 of 15 PageID #: 625
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION..................................................................................................................1
`
`II. NATURE AND STAGE OF THE PROCEEDINGS.............................................................2
`
`III. SUMMARY OF ARGUMENT .............................................................................................3
`
`IV. STATEMENT OF FACTS.....................................................................................................4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`This Court Has Presided Over The Same Patents At Issue In This Case ................4
`
`The Plaintiffs Chose to File Two Lawsuits Against Hospira ..................................4
`
`The Plaintiffs Amended Their Complaint In The New Jersey Action.....................5
`
`The Active Complaints In Delaware And New Jersey Are Not Identical ...............5
`
`Plaintiffs Proposed Consolidation In New Jersey....................................................6
`
`V. ARGUMENT .........................................................................................................................6
`
`A.
`
`B.
`
`The First-to-File Rule Does Not Support a Stay......................................................6
`
`The Traditional Stay Factors Support Hospira ........................................................8
`
`1.
`
`Prejudice to Hospira.....................................................................................8
`
`a.
`
`b.
`
`Plaintiffs’ arguments that Hospira will not be prejudiced by
`a stay are unfounded ........................................................................8
`
`Plaintiffs have not shown hardship..................................................9
`
`A stay will not simplify issues for trial......................................................10
`
`This Court is the most efficient forum to resolve this dispute...................10
`
`2.
`
`3.
`
`VI. CONCLUSION ....................................................................................................................11
`
`i
`
`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 3 of 15 PageID #: 626
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Belden Techs. Inc. v. Superior Essex Commc’ns LP,
`2010 U.S. Dist. LEXIS 90960 (D. Del. Sept. 2, 2010)....................................................6, 8, 10
`
`CertainTeed Corp. v. Nichiha USA, Inc.,
`2009 WL 3540796 (E.D. Pa. Oct. 29, 2009)..............................................................................8
`
`Cognex Corp. v. Nat’l Instruments Corp.,
`2001 WL 34368283 (D. Del. June 29, 2001)...........................................................................10
`
`E.E.O.C. v. Univ. of Pa.,
`850 F.2d 969 (3d Cir. 1988).......................................................................................................7
`
`Landis, et al. v. N. Am. Co.,
`299 U.S. 248 (1936)...................................................................................................................9
`
`PhotoMedex, Inc. v. St. Paul Fire & Marine Ins. Co.,
`2009 WL 2326750 (E.D. Pa. July 28, 2009)..............................................................................7
`
`Saint-Gobain Performance Plastics Corp. v. Advanced Flexible Composites, Inc.,
`436 F. Supp. 2d 252 (D. Mass. 2006) ......................................................................................10
`
`Salix Pharm., Ltd, et al. v. Mylan Pharm. Inc.,
`No. 14 Civ. 152 (N.D. W. Va. Feb. 18, 2015).......................................................................6, 7
`
`Sighting Sys. Instruments, LLC v. Prestige Law Enforcement, Inc.,
`2006 WL 2642184 (N.D. Tex. Sept. 11, 2006)........................................................................11
`
`STATUTES
`
`21 U.S.C. § 355(j)(5)(C)(i)(III)........................................................................................................9
`
`OTHER AUTHORITIES
`
`D.N.J. L. Civ. R. 9.3 §3.6(a), (j) ......................................................................................................9
`
`ii
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`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 4 of 15 PageID #: 627
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`I.
`
`INTRODUCTION
`
`As Plaintiffs Helsinn Healthcare S.A. and Roche Palo Alto LLC (collectively,
`
`“Plaintiffs”) state in the first sentence of their opening brief in support of their stay motion,
`
`Plaintiffs, not Defendant Hospira, Inc. (“Hospira”), filed this patent infringement action in the
`
`District of Delaware on March 25, 2015 (“the Delaware Action”). Despite filing the Delaware
`
`Action nine months ago, Plaintiffs are just now requesting a stay in favor of the action they filed
`
`two days earlier in the District of New Jersey (“the New Jersey Action”).1 Perhaps not
`
`surprisingly, Plaintiffs requested that Hospira agree to a stay in this Court only after their receipt
`
`of a favorable ruling in New Jersey in litigation against Teva Pharmaceuticals USA Inc. (“Teva”)
`
`involving some of the same patents at issue here.2 Teva filed a notice of appeal to the Federal
`
`Circuit on November 30, 2015.
`
`Moreover, the basis for Plaintiffs’ stay motion is both legally and factually flawed.
`
`Contrary to the arguments in Plaintiffs’ stay motion, the parties and complaints in the New
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`Jersey Action and the Delaware Action are not identical, and the first-to-file rule therefore does
`
`not apply here. Plaintiffs also incorrectly argue that discovery has begun in the New Jersey
`
`Action, in order to support the stay request. In fact, discovery has not begun in the New Jersey
`
`Action. Accordingly, the traditional stay factors do not support Plaintiffs’ request for a stay
`
`either.
`
`Hospira is preparing to proceed to discovery and trial in this case under whatever
`
`schedule is set by this Court. For the reasons stated in its fully-briefed motion to dismiss the
`
`1 The New Jersey Action is Case No. 3:15-cv-02077-MLC-DEA. It is assigned to Judge Mary L.
`Cooper and Magistrate Judge Douglas E. Arpert.
`2 That action is Case No. 3:11-cv-03962-MLC-DEA. It is also assigned to Judge Mary L. Cooper
`and Magistrate Judge Douglas E. Arpert.
`
`1
`
`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 5 of 15 PageID #: 628
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`New Jersey Action for lack of jurisdiction, Hospira is not subject to personal jurisdiction in New
`
`Jersey. However, Hospira consented to jurisdiction in this Court many months ago.
`
`Accordingly, Plaintiffs’ stay motion should be denied, and this case should be set for a Rule
`
`16(b) scheduling conference.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`Plaintiffs filed an initial complaint against Hospira on March 23, 2015 in the District of
`
`New Jersey, two days prior to filing the complaint in this case. (D.I. 21, Ex. A.) In the New
`
`Jersey Action, Plaintiffs assert that Hospira’s plan to manufacture and sell a generic version of
`
`Aloxi in doses of 0.25 mg/5 mL and 0.075 mg/1.5 mL palonosetron hydrochloride intravenous
`
`solution products would infringe U.S. Patent Nos. 7,947,724, 7,947,725, 7,960,424, 8,598,219,
`
`and 8,729,094 (the “patents-in-suit”). (Id. at ¶¶ 4, 17, 19, 24, 26, 31, 33, 38, 40, 45, 47.) By
`
`contrast, in the Delaware Action, Plaintiffs allege only that Hospira’s plan to manufacture and
`
`sell a generic version of Aloxi in a 0.25 mg/5 mL palonosetron hydrochloride intravenous
`
`solution product would infringe the patents-in-suit. (D.I. 1 at ¶¶ 4, 17, 19, 24, 26, 31, 33, 38, 40,
`
`45, 47.)
`
`After Hospira moved to dismiss the New Jersey complaint for lack of personal
`
`jurisdiction, Plaintiffs filed an amended complaint in New Jersey on June 30, 2015 adding
`
`Hospira Worldwide, Inc. (“Worldwide”) as a defendant alongside Hospira. (Ex. 1.)3 Hospira
`
`and Worldwide then filed a second motion to dismiss for lack of personal jurisdiction in the New
`
`Jersey Action. (Ex. 2.) As of today, that motion is fully briefed in the New Jersey court.
`
`3 Exhibits to Defendant’s Opposition to Plaintiffs’ Motion to Stay the Second-Filed Case in the
`District of Delaware are submitted as exhibits to the Declaration of Dominick T. Gattuso, filed
`herewith.
`
`2
`
`

`
`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 6 of 15 PageID #: 629
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`III.
`
`SUMMARY OF ARGUMENT
`
`Plaintiffs made the strategic decision to file two different lawsuits against Hospira in two
`
`different jurisdictions in March 2015. Nine months later, having prevailed before the district
`
`court in New Jersey in an earlier lawsuit involving different parties but some of the same patents,
`
`Plaintiffs seek a stay of the Delaware Action in favor of the New Jersey Action. However,
`
`Plaintiffs chose to sue Hospira in Delaware and should not be able to forum shop by complaining
`
`about prosecuting a case that they brought themselves. This Court should therefore exercise its
`
`discretion to deny Plaintiffs’ request for a stay. Hospira has always maintained throughout the
`
`past nine months, long before the Plaintiffs received a decision in their prior New Jersey
`
`litigation, that there was no jurisdiction over Hospira in the New Jersey Action, but that
`
`jurisdiction was proper in Delaware.
`
`The first-to-file rule, moreover, does not support Plaintiffs’ proposed stay. That rule
`
`applies only where the parties and issues are identical. But contrary to Plaintiffs’ contention
`
`here, the parties and issues in the two cases are not identical. The first-to-file rule therefore does
`
`not apply under Third Circuit precedent.
`
`The traditional stay factors do not support Plaintiff’s motion to stay these proceedings.
`
`Plaintiffs ignore numerous other facts that counsel against a stay, such as: (1) this Court’s
`
`familiarity with Aloxi and the patents-in-suit; (2) the fact that the Delaware Action would
`
`involve fewer parties than the New Jersey Action; and (3) the fact that no discovery has taken
`
`place in the New Jersey Action. Plaintiffs also gloss over the fact that the initial scheduling
`
`conference has not yet occurred in New Jersey and no contentions or documents will be
`
`exchanged until February 2016 at the earliest.
`
`As explained below, Plaintiffs’ request for a stay should be denied.
`
`3
`
`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 7 of 15 PageID #: 630
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`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`This Court Has Presided Over The Same Patents At Issue In This Case
`
`While Plaintiffs are correct that a trial took place in the New Jersey court relating to
`
`many of the same patents asserted against Hospira (see, e.g., D.I. 20 at 4-6), they ignore this
`
`Court’s extensive experience with the patents related to the Plaintiffs’ Aloxi products. This Court
`
`has had ten individual actions pending before it involving the Orange Book patents listed as
`
`related to the Aloxi products.4 The five earliest actions were consolidated into a case that was
`
`before this Court for two and a half years, during which time the Court proceeded with factual
`
`discovery, expert discovery, and claim construction. (Compare Case. No. 1:13-cv-688 D.I. 1
`
`with D.I. 221; see, e.g., Case. No. 1:13-cv-688 D.I. 169; see, e.g., Case. No. 1:13-cv-688 D.I.
`
`191.) In fact, that consolidated case was less than a month from trial when Plaintiffs settled with
`
`the last of the defendants. (Compare Case. No. 1:13-cv-688 D.I. 221 with Case No. 1:13-cv-688
`
`D.I. 191 (“The Bench Trial will remain as currently scheduled (11/2/2015 at 9:00 AM for 5
`
`days).”).)
`
`B.
`
`The Plaintiffs Chose to File Two Lawsuits Against Hospira
`
`Plaintiffs filed an initial complaint against Hospira in New Jersey on March 23, 2015
`
`(subsequently amended, as detailed below). (D.I. 21, Ex. A.) They then sued Hospira in
`
`4 The other cases that have been brought before this Court by Plaintiffs relating to the Aloxi
`products in the District of Delaware are: Helsinn Healthcare S.A., et al. v. Aurobindo Pharma
`Ltd., et al., Case No. 1:13-cv-688; Helsinn Healthcare S.A., et al. v. Ben Venue Labs., Inc., et al.,
`Case No. 1:13-cv-1612; Helsinn Healthcare S.A, et al. v. Accord Healthcare Inc., et al., Case
`No. 1:13-cv-2101; Helsinn Healthcare S.A., et al. v. Cipla Ltd., et al., Case No. 1:14-cv-427;
`Helsinn Healthcare S.A., et al. v. Mylan, Inc., et al., Case No. 1:14-cv-709; Helsinn Healthcare,
`S.A., et al. v. Exela Pharma Scis. LLC, Case No. 1:14-cv-1444; Helsinn Healthcare, S.A., et al. v.
`Par Pharm. Inc., et al., Case No. 1:15-cv-265; Helsinn Healthcare, S.A., et al. v. Fresenius Kabi
`USA LLC, Case No. 1:15-cv-865; Helsinn Healthcare, S.A., et al. v. Fresenius Kabi USA LLC;
`Case No. 1:15-cv-918.
`
`4
`
`

`
`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 8 of 15 PageID #: 631
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`Delaware on March 25, 2015. (D.I. 1.) The New Jersey Complaint asserted that Hospira’s
`
`proposed 0.25 mg/5 mL and 0.075 mg/1.5 mL palonosetron hydrochloride intravenous solution
`
`products would infringe the five patents-in-suit. (D.I. 21, Ex. A at ¶¶ 4, 17, 19, 24, 26, 31, 33, 38,
`
`40, 45, 47.) By contrast the Delaware Complaint asserts that only Hospira’s proposed 0.25 mg/5
`
`mL palonosetron hydrochloride intravenous solution product infringes the five patents-in-suit.
`
`(D.I. 1 at ¶¶ 4, 17, 19, 24, 26, 31, 33, 38, 40, 45, 47.)
`
`Hospira answered the Delaware complaint on June 8, 2015. (D.I. 7.) Plaintiffs answered
`
`Hospira’s counterclaims on November 13, 2015. (D.I. 17.) This case is ready to proceed to a
`
`scheduling conference and discovery. To that end, a Joint Status Report is due in this case on
`
`January 15, 2015. (D.I. 18.)
`
`C.
`
`The Plaintiffs Amended Their Complaint In The New Jersey Action
`
`Plaintiffs amended their initial complaint in New Jersey on June 30, 2015 to add Hospira
`
`Worldwide, Inc. as a defendant. (Ex. 1.) Hospira’s motion to dismiss that complaint for lack of
`
`personal jurisdiction is fully briefed and awaiting decision by Judge Cooper. Worldwide is not a
`
`party to the Delaware Action.
`
`D.
`
`The Active Complaints In Delaware And New Jersey Are Not Identical
`
`Thus, in addition to being brought against an additional defendant that is not a party to
`
`the Delaware action (Worldwide), the New Jersey complaint relates to an additional proposed
`
`drug product – the 0.075 mg/1.5 mL palonosetron hydrochloride intravenous solution, which is
`
`not at issue in the Delaware action. (Compare Ex. 1 at ¶¶ 21, 31, 40, 49, 58 with D.I. 1 at ¶¶ 17,
`
`24, 31, 38, 45.) This distinction is significant.
`
`
`
`
`
`5
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`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 9 of 15 PageID #: 632
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`E.
`
`Plaintiffs Proposed Consolidation In New Jersey
`
`Contrary to Plaintiffs’ comments, discovery has not begun in the New Jersey case. An
`
`initial scheduling conference has been set for January 26, 2016. (D.I. 21, Ex. H.)
`
`In the New Jersey Action, Plaintiffs have requested that their lawsuit against Hospira and
`
`Worldwide be consolidated with other suits Plaintiffs have filed in New Jersey against other
`
`parties including, among others, Fresenius Kabi USA, LLC (“Fresenius”) and Exela Pharma
`
`Sciences, LLC. (D.I. 21, Ex. E.) The consolidated action proposed by Plaintiffs would involve
`
`four additional patents that are not asserted against Hospira, U.S. Patent Nos. 8,518,981,
`
`8,598,218, 9,066,980, and 9,125,905. (See Ex. 4 at ¶ 14.) In fact, only one of the patents
`
`asserted against Fresenius in Case No. 3:15-cv-2078 is also asserted against Hospira. (Id; D.I. 1
`
`at ¶ 7.) Therefore, a consolidated action is New Jersey would include discovery on more and
`
`different patents than the Delaware Action.
`
`V.
`
`ARGUMENT
`
`Courts generally consider three factors when deciding whether to grant a stay: (i) whether
`
`a stay will prejudice the non-moving party; (ii) whether a stay will simplify the issues for trial;
`
`and (iii) whether discovery is complete and whether a trial date has been set. Belden Techs. Inc.
`
`v. Superior Essex Commc’ns LP, 2010 U.S. Dist. LEXIS 90960, at *5 (D. Del. Sept. 2, 2010).
`
`Since Plaintiffs filed two separate lawsuits against Hospira, Plaintiffs also rely on the first-to-file
`
`rule in support of their motion to stay this litigation. In fact, neither the first-to-file rule nor the
`
`traditional stay factors support a stay.
`
`A.
`
`The First-to-File Rule Does Not Support a Stay
`
`Courts consider three factors in determining whether to apply the first-to-file rule: (i)
`
`chronology; (ii) identity of parties; and (iii) identity of issues. Salix Pharm., Ltd, et al. v. Mylan
`
`Pharm. Inc., No. 14 Civ. 152, at *6 (N.D. W. Va. Feb. 18, 2015) (citing Intersearch Worldwide,
`
`6
`
`

`
`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 10 of 15 PageID #: 633
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`Ltd. v. Intersearch Grp., Inc., 544 F. Supp. 2d 949, 957 (N.D. Cal. 2008)).5 Additionally, the
`
`first-to-file rule is subject to various exceptions. It does not apply, for example, where a party
`
`brought the first suit in bad faith or for the purpose of forum shopping. E.E.O.C. v. Univ. of Pa.,
`
`850 F.2d 969, 972 (3d Cir. 1988).
`
`The first-to-file rule should not apply here because there is neither identity of the parties
`
`nor identity of the issues; there are material differences between the New Jersey and Delaware
`
`actions. Salix Pharmaceuticals, on which Plaintiffs rely, applied the first-to-file rule because the
`
`first-filed case involved the “same parties” and “the complaints, the patents and the allegedly
`
`infringing products are all identical.” Salix Pharmaceuticals, No. 14 Civ. 152, at 8 (D.I. 21, Ex.
`
`K at 8.) That is plainly not the case here. The New Jersey Action involves different parties, for
`
`Plaintiffs have sued Worldwide—which is not a party to the Delaware Action. Moreover, the
`
`complaints and the allegedly infringing products are not identical: the later-filed Delaware
`
`Action asserts infringement only of Hospira’s proposed 0.25 mg/5 mL palonosetron
`
`hydrochloride intravenous solution product, while the New Jersey Action asserts infringement of
`
`the 0.075 mg/1.5 mL product as well as the 0.25 mg/5 mL product. (Compare Ex. 1 at ¶¶ 21, 31,
`
`40, 49, 58 with D.I. 1 at ¶¶ 17, 24, 31, 38, 45.)
`
`“[U]nder the Third Circuit’s narrow ‘truly duplicative’ standard,” it is not sufficient that
`
`the New Jersey and Delaware cases involve many of the same issues. See PhotoMedex, Inc. v.
`
`St. Paul Fire & Marine Ins. Co., 2009 WL 2326750, at *5 (E.D. Pa. July 28, 2009) (holding that
`
`the first-filed rule did not apply because the first-filed California action would have addressed
`
`legal and factual issues not present before the Pennsylvania judge, making the actions not
`
`duplicative). Thus, because the first-to-file rule does not apply where the later-filed case is not
`
`5 The Salix opinion is included as an exhibit to Plaintiffs’ motion to stay. (D.I. 21, Ex. K.)
`
`7
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`

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`“truly duplicatiVe” of the first-filed one, Plaintiffs’ motion to stay should be denied. Certainfeed
`
`Corp. v. Nichiha USA, Inc., 2009 WL 3540796, at *3 (E.D. Pa. Oct. 29, 2009) (quoting Grider v.
`
`Keystone Health Plan C171, Inc, 500 F.3d 322, 333 11.6 (3d Cir. 2007)) (explaining that a “case
`
`must be materially on all fo11rs with the first-filed case. such that a detennjnation in one action
`
`leaves little or nothing to be determined in the other” (internal quotation marks omitted)).
`
`Plaintiffs’ forum-shopping, as evident from the timing of their stay motion, also counsels
`
`against a stay. Plaintiffs waited to bring this stay motion until after they received a favorable
`
`ruling in New Jersey. See Belden, 2010 U.S. Dist. LEXIS 90960, at *8. Had the outcome in
`
`New Jersey been different, Plaintiffs presumably would have dismissed the New Jersey Action
`
`against Hospira a11d sought to proceed in Delaware instead. This Court should not reward
`
`Plaintiffs’ forum-shopping by awarding them a stay.
`
`B.
`
`The Traditional Stay Factors Support Hospira
`
`1.
`
`Prejudice to Hospira
`
`a.
`
`Plaintiffs’ arguments that Hospira will not be prejudiced by a
`stay are unfounded
`
`Plaintiffs raise three related arguments in support of their argiunent that Hospira would
`
`not be prejudiced by a stay. They argue that discovery is already progressing in New Jersey;..
`
`- and that proceeding in Delaware wo11ld avoid the benefits of coordinated discovery
`
`with other defendants. (D.I. 20 at 9-1 1.) These arguments lack merit.
`
`Contrary to Plaintiffs’ contention, discovery has not actually begun in New Jersey.
`
`Hospira provided Plaintiffs with its ANDA a11d subsequent correspondence with the FDA under
`
`a New Jersey local rule requiring any ANDA defendant to do so as a matter of course, even
`
`where it has moved to dismiss instead of answering the complaint. D.N.J. L. Civ. R. 9.3 §3.6(a),
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`

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`(i). This is not discovery.“ Nothing else has been exchanged between the parties. Indeed, as
`
`Plaintiffs admit, the initial scheduling conference will not even take place until January 26, 2016.
`
`(D1. 20 at 11-) l
`
`Plaintiffs do not explain how coordinated discovery in New Jersey means that Hospira is
`
`not prejudiced by a stay, nor could they. Because the Delaware Action involves fewer products
`
`and parties, therefore. i11 its present post1u‘e, Hospira will have more control to pursue both its
`
`counterclaims and its affirmative defenses in a meaningful way in this litigation. Moreover,
`
`proceeding in Delaware may allow Hospira to get to trial in a reasonable a111ount of time and
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`potentially sooner than i11 the New Jersey Action, given that Plaintiffs’ litigation against Teva
`
`took nearly fo1u' years to reach trial. (D.I. 20 at 4.) Hospira would therefore be prejudiced by
`
`having the Delaware action stayed i11 favor of the more complicated New Jersey Action.
`
`Plaintiffs’ motion provides no reason to reach a different conclusion.
`
`b.
`
`Plaintiffs have not shown hardship
`
`111 a case like this one, where Hospira has shown prejudice, a party requesting a stay
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`“must make o11t a clear case of hardship or inequity in being required to go forward.” Lmldis, er
`
`al. v. N. Am. C0., 299 U.S. 248, 255 (1936): see also Saint-Gobain Performarme Plastics Corp.
`
`
`
`

`
`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 13 of 15 PageID #: 636
`
`v. Advanced Flexible Composites, Inc., 436 F. Supp. 2d 252, 253 (D. Mass. 2006); Cognex Corp.
`
`v. Nat’l Instruments Corp., 2001 WL 34368283, at *1 (D. Del. June 29, 2001) (“[T]his Court has
`
`required the party requesting the stay to make a showing of a clear case of hardship or inequity
`
`before the Court can enter a stay order.” (internal quotation marks omitted)). Because Plaintiffs
`
`have not shown hardship here, the stay should be denied and this Court need not even consider
`
`the remaining factors. See id.
`
`Plaintiffs do not come close to showing that they would suffer hardship if this action goes
`
`forward. Plaintiffs made a deliberate decision to bring an action in Delaware. They had full
`
`control over the allegations made in the Delaware Action. And they are, of course, free to
`
`withdraw this action if they wish. There certainly is no hardship in requiring them to proceed
`
`with an action that they chose to file.
`
`2.
`
`A stay will not simplify issues for trial
`
`The second factor—whether the stay would promote judicial economy by simplifying
`
`issues for trial—also favors Hospira. Once again, the New Jersey action and the Delaware
`
`action, are not identical. Unlike the Delaware Action, Plaintiffs brought the New Jersey Action
`
`against Hospira and Worldwide and identified several accused products. Moreover, the
`
`consolidated New Jersey actions involve additional patents which have not been asserted against
`
`Hospira in the Delaware Action or the New Jersey Action. Proceeding here would simplify the
`
`issues for trial.
`
`3.
`
`This Court is the most efficient forum
`to resolve this dispute
`
`The third factor asks how quickly the case can be prepared for trial and whether a trial
`
`date has been set. Belden, 2010 U.S. Dist. 90960, at *5. This factor favors Hospira. No trial
`
`date has been set in the New Jersey court—and, as explained above, Plaintiffs’ assertion that
`
`10
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`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 14 of 15 PageID #: 637
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`discovery has begun in New Jersey is incorrect. Indeed, the discovery on which Plaintiffs rely so
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`heavily, (D.I. 20 at 7, 10), will not occur until at least February 2016.
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`Moreover, the fact that the Delaware case is in the early stages of litigation does not
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`support Plaintiffs. “[J]ust as the absence of a negative inference does not create a positive
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`inference, so also the lesser cost of granting a stay early in the litigation process does not equate
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`to a factor favoring a stay….” Sighting Sys. Instruments, LLC v. Prestige Law Enforcement, Inc.,
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`2006 WL 2642184, at *4 (N.D. Tex. Sept. 11, 2006). That is particularly true here: although this
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`case is at an early stage, it is ready to be scheduled and, as explained above, would proceed
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`quickly by virtue of this Court’s local rules and the Default Standard for Discovery, Including
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`Discovery of Electronically Stored Information “ESI”.
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`Finally, this Court is experienced in adjudicating patent actions. And it is just as familiar
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`with the patents-in-suit as the New Jersey court, having presided over a case involving Aloxi that
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`settled just before trial. There is no reason to think that adjudication in New Jersey would be
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`more efficient than adjudication here.
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`VI.
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`CONCLUSION
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`For the foregoing reasons, Plaintiffs’ motion for a stay should be denied.
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`PROCTOR HEYMAN ENERIO LLP
`
`/s/ Dominick T. Gattuso
`Dominick T. Gattuso (#3630)
`300 Delaware Avenue, Suite 200
`Wilmington, DE 19801
`(302) 472-7305
`dgattuso@proctorheyman.com
`
`Attorney for Defendant Hospira, Inc.
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`

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`Case 1:15-cv-00264-GMS Document 27 Filed 01/05/16 Page 15 of 15 PageID #: 638
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`OF COUNSEL
`
`Sara Tonnies Horton
`JENNER & BLOCK LLP
`353 North Clark Street
`Chicago, IL 60654
`Telephone: (312) 840-7618
`shorton@jenner.com
`
`Dated: December 28, 2015
`
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