Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 1 of 7 PageID #: 1144
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`BRISTOL-MYERS SQUIBB COMPANY and
`PFIZER INC.,
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`Plaintiffs,
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`v.
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`AUROBINDO PHARMA USA INC.,
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`Defendant.
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`BRISTOL-MYERS SQUIBB COMPANY and
`PFIZER INC.,
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`Plaintiffs,
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`v.
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`MYLAN PHARMACEUTICALS INC.,
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`Defendant.
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`C.A. No. 17-374-LPS
`(Consolidated)
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`C.A. No. 17-379-LPS
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`MEMORANDUM ORDER
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`1.
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`Pending before the Court are the parties' disputes as to how the venue-related
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`discovery previously ordered by the Court (see, e.g., C.A. No. 17-379 D.I. 36, 37) is to occur.
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`Having heard argument on November 15 (see C.A. No. 17-374 D.I. 40 (hereinafter, "Transcript"
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`or "Tr.")), and having considered the parties' subsequently-filed joint status report (C.A. No. 17-
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`374 D.I. 39) ("Report"), IT IS HEREBY ORDERED that, for reasons to be explained below:
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`A.
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`The parties' agreed-upon steps - (i) Defendant Mylan Pharmaceuticals Inc.
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`("MPI") will serve supplemental declaration(s) addressing venue-related
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`topics (see Report at 1, 4 ~ 1, 5 ~ 1 ), including MPI' s relationship with any
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`1
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 2 of 7 PageID #: 1145
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`parent, subsidiary, and affiliated entity, and (ii) the parties will, by
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`December 8, submit a proposed form of protective order- are ADOPTED.
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`B.
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`MPI's supplemental declaration(s) shall be served no later than December
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`15, 2017. The Court agrees with MPI that this is a reasonable deadline.
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`C.
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`On the remaining disputes - as to the scope and timing of discovery, and
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`when the parties should present additional future disputes to the Court -
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`Plaintiffs' Bristol-Myers Squibb Company and Pfizer Inc.'s ("Plaintiffs")
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`proposals (Report at 5-7 ifif 2-7) are ADOPTED, subject only to the
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`following brief extensions of some of Plaintiffs' proposed deadlines:
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`(i) to the extent MPI objects to the scope of discovery requests
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`served by Plaintiffs, it shall serve objections no later than January
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`12, 2018, on which the parties shall meet and confer by January 19,
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`and the parties shall present any unresolved, ripe disputes to the
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`Court (pursuant to the Discovery Matters procedures) no later than
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`January 26;
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`(ii) subject to objections, MPI shall provide complete substantive
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`responses to the written discovery by January 31; and
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`(iii) venue-related discovery shall be completed by the later of
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`March 15 or 45 days after resolution of disputes presented to the
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`Court in accordance with this Order.
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`2.
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`The Court has made these determinations based on its finding that Plaintiffs'
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`overall proposal is more reasonable, persuasive, and consistent with the Court's prior rulings and
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`2
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 3 of 7 PageID #: 1146
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`guidance, than is MPI' s proposal. For instance, MPI appears to expect Plaintiffs to accept all
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`representations in its forthcoming declaration(s) without the necessity of follow-up beyond
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`·interrogatories (see Report at 2-3), but the Court has already stated that "[P]laintiffs are going to
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`have to be given some limited chance to take discovery sufficient to test whatever it is they're
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`being told by the defendant" (see Tr. at 39), which will include (if Plaintiffs wish) depositions.
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`Also, MPI complains that "Plaintiffs offer no legal basis for how any Mylan entity's submission
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`of any document to the Delaware state government ... could establish venue of MPI" (Report at
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`3), but, as Plaintiffs observe, these submissions "would include forms with addresses and
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`property tax records," which may be "probative of whether a Mylan entity exercises control over
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`a physical place ofbusiiless in Delaware" (id. at 8 n.3). Nor does the Court agree with MPI's
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`~suggestions that the Report mostly reveals "largely undisputed aspects of the procedural
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`schedule" (Report at 4) or that Plaintiffs' proposal is "expansive" and will "unnecessarily
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`prolong the dispute and tax the resources of the Court and the parties" (id.). Instead, it is the
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`Court's view that MPI has raised important, unsettled, novel questions as to whether this District
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`is a proper venue for this Hatch-Waxman patent litigation, and Plaintiffs have made reasonable
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`proposals to obtain the discovery necessary to allow the parties, and the Court, to answer these
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`questions, without disturbing the overall progress of this case (or the many related cases) .1
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`Furthermore, as Plaintiffs correctly state, "[t]o the extent the parties disagree about a specific
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`request after good-faith negotiations to refine it, the Discovery Matters procedure remains
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`available for MPI to seek relief." (Report at 9)
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`1There are presently at least 20 related cases pending in this District. Trial is scheduled
`for October 2019. (See C.A. No. 17-374 D.I. at 22 if 21)
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`3
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 4 of 7 PageID #: 1147
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`3.
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`The Court pastes below certain pertinent portions of the guidance it previously
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`provided the parties, in connection with its denial of MPI' s earlier request that the Court deny the
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`entirety of Plaintiffs' request for any venue discovery. (C.A. No. 17-379 D.I. 45 at 3) The Court
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`stated the following at the conclusion of the November 15 teleconference:
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`. . . I view the dispute in front of me today as actually a pretty
`narrow one. MPI's request is that I ... outright den[y] ... the
`venue discovery that I had ordered in my earlier opinion [C.A. No.
`17-379 D.I. 36], which was [issued] pre-Cray[2
`] and that the
`plaintiffs now seek. That request, that is, to outright deny all venue
`discovery, that request is denied.
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`I don't believe that plaintiffs are engaged in a fishing
`expedition. . . . . And I don't think that the decision in Cray
`makes the theories of venue being articulated by plaintiffs frivolous
`and, therefore, I don't believe that some targeted limited amount of
`discovery would be futile ....
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`. . . I think it is important that today is a discovery dispute.
`I don't view myself today as being tasked with deciding on the
`merits whether MPI has a regular and established place of business
`in Delaware as that term has been explained by Cray. I also do not
`view myself as being faced with the task today of deciding if MPI
`has met its burden to show that it lacks a regular and established
`place of business here. And I'm also not, today, in a position to
`articulate with full precision exactly what the impact of Cray is on
`the facts here as they may be. That's a process, as I'm sure you
`will appreciate, I'm actively engaged in in this case and others in
`examining and reexamining Cray and trying to figure out how it
`does apply, for instance, here. Here, I remain of the view that at
`least some limited discovery is necessary in order for me to make
`that final application of Cray and the statute [28 U.S.C. § 1400] fo
`the facts here.
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`I continue to believe that discovery may reveal that MPI
`does have a regular and established place of business in Delaware
`and that venue would therefore be proper here. When I look at the
`declarations submitted to this point, ... they do not address
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`2ln re Cray Inc., 871F.3d1355 (Fed. Cir. 2017).
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`4
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 5 of 7 PageID #: 1148
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`whether or not any of the affiliates, subsidiaries, parents, potential
`alter egos, that is, the other entities in the Mylan corporate family,
`[including] Delaware subsidiaries ofMPI, ... have a regular and
`established place of business in Delaware.
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`In my view, Cray does not address whether a physical place
`of a corporate affiliate or subsidiary or alter ego or agent can, for
`venue purposes, be attributed to the named defendant in a case ....
`And I have not heard yet any persuasive reason to conclude the law
`has changed on that point.[3
`] I'm not even sure that MPI is arguing
`that the law has changed on that point.
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`. . . MPI seems to acknowledge that at least an alter ego or
`a sham entity, if that were what the record ultimately showed,
`would allow the place of business of ... that sham entity to be
`attributed to the named defendant for purposes of assessing regular
`and established place of business for purposes of determining
`proper venue. The point being that the legal theory that I think
`motivates the plaintiffs' allegations of venue do [es] not constitute a
`theory that I can say at this point that Cray even addressed, much
`less eliminated or rendered invalid or inapplicable. So the Court
`can't say that plaintiffs' allegations regarding the potential contacts
`of those other corporate entities in the Mylan family are frivolous.
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`. . . . Cray, instead, considers whether a physical place of a
`defendant's employee can be treated as a physical place of a named
`defendant. That's a different question than the question before me
`today ....
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`I think Cray says that what happens at the place of an
`employee can still be considered for evaluating whether or not the
`named defendant has a place. For instance, Cray talks (I think
`positively) about Cordis[4
`] and ... the employee in Cordis: what
`he was doing in his home with respect to, for instance, the
`defendant[' s] literature and products. And Cray seems to say that
`even post-Cray, Cordis is good law and that that [the] Cordis
`employee's place in the district could be treated as the named
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`3See, e.g., Minn. Min. & Mfg. Co. v. Eco Chem, Inc., 757 F.2d 1256, 1265 (Fed. Cir.
`1985) ("[V]enue in a patent infringement case [may be] proper with regard to one corporation by
`virtue of the acts of another, intimately connected, corporation.").
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`41n re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).
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`5
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 6 of 7 PageID #: 1149
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`defendant's place[,] or at least that place of the employee could be
`considered as a relevant factor in determining whether the named
`defendant has a place.
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`But even putting that aside, I think as importantly, the
`question of whether you can consider the physical place of a
`defendant's employee as part of the analysis of whether or not the
`named defendant has a physical place is a different question than
`whether you could treat the physical place of a corporate affiliate,
`corporate subsidiary, corporate parent, [or] corporate alter ego as
`the physical place of the named defendant. .. -. [I]t seems to me
`that Cray gives a couple ofreasons for why the employee's place
`may in some circumstances not be attributable [to] or treated as
`part of the named defendant's place; reasons that don't seem, at
`least on the surface, to apply to the question in front of me today.
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`For instance, Cray talks about [how] an employee can
`change jobs and therefore it would seem odd, at least in some
`cases, to treat the employee's home as the place of the defendant.
`But the types of entities that are alleged to be part of the Mylan
`family[,] and therefore affiliates in some way ofMPI[,] I don't
`think could as easily terminate their affiliation with MPI. It seems
`easier to imagine an employee going to another employer than say
`a subsidiary of MPI suddenly not being a subsidiary of MPI. So
`that might be a meaningful distinction.
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`And, second, Cray talks about [how] the employee's home
`is often not established or ratified by the defendant. I'm not sure
`that that will often be the case with respect to a corporate
`subsidiary or corporate affiliate's place. That is, the facts here may
`show that the corporate subsidiary or corporate affiliate' s place is
`established or ratified by the named defendant ....
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`MPI emphasizes repeatedly that the record in [its] view
`already establishes that there is no relationship between any of the
`other related entities and the ANDA at issue in this case. I have
`not yet been pointed to where Cray or any other case at least from
`the Court of Appeals tells me that such a relationship is required in
`order for venue to be appropriate.
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`. . . . Also important to my decision, and I think
`undisputed, is Cray repeatedly [states] that regular and established
`place ofbusiness issues are fact specific. That favors ... in a .
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`Case 1:17-cv-00379-LPS Document 57 Filed 11/28/17 Page 7 of 7 PageID #: 1150
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`difficult case granting some discovery ... , in order to allow the
`Court to make a fact specific decision on a full record ....
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`(Tr. at 33~39) (internal punctuation and paragraph spacing added)
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`4.
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`The Court adheres to and adopts the statements recorded in the transcript above,
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`which have informed the Court's rulings on the disputes addressed in this Memorandum Order.
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`November 28, 2017
`Wilmington, Delaware
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`7
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