Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`TEVA PHARMACEUTICALS
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`INTERNATIONAL GMBH and
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`TEVA PHARMACEUTICALS
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`USA, INC.,
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`Plaintiffs,
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`v.
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`ELI LILLY AND COMPANY,
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`Defendant.
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`Civil Action No.
`1:18-cv-12029-ADB
`[Leave to file granted
`on January 4, 2019]
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`PLAINTIFFS’ SUR-REPLY IN OPPOSITION TO DEFENDANT’S
`MOTION TO TRANSFER, OR, IF NOT TRANSFERRED, THEN TO
`STAY THIS LITIGATION PENDING INTER PARTES REVIEW
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 2 of 9
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Boateng v. Gen. Dynamics Corp.,
`460 F. Supp. 2d 270 (D. Mass. 2006) ....................................................................................2, 3
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`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..............................................................................................2, 3
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`Garcia-Tatupu v. Bert Bell/Peter Rozelle NFL Player Ret. Plan,
`249 F. Supp. 3d 570 (D. Mass. 2017) ................................................................................1, 2, 3
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`Motorola, Inc. v. PC-Tel, Inc.,
`58 F. Supp. 2d 349 (D. Del. 1999) .............................................................................................2
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`Nilssen v. Everbrite, Inc.,
`2001 WL 34368396 (D. Del. Feb. 16, 2001) .........................................................................3, 4
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`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`__ U.S. __, 137 S. Ct. 1514 (2017) ............................................................................................2
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`Trover Grp., Inc. v. Dedicated Micros USA,
`2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) .......................................................................... 5
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`Statutes
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`28 U.S.C. § 1400(b) .........................................................................................................................2
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`i
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 3 of 9
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`Lilly’s reply confirms that the Court should neither transfer this action to Indiana nor stay
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`it pending Lilly’s petitions for inter partes review. The reply mostly reiterates the same
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`arguments made by Lilly in its opening brief. Nevertheless, Teva submits this sur-reply to
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`briefly address some of the arguments made by Lilly in reply.
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`A.
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`The Court Should Not Transfer This Case To Indiana
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`Lilly’s reply makes clear that none of the factors courts assess in the transfer analysis
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`“weigh[s] heavily in favor of transfer.” Garcia-Tatupu v. Bert Bell/Peter Rozelle NFL Player
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`Ret. Plan, 249 F. Supp. 3d 570, 576 (D. Mass. 2017). Lilly does not deny that it has a major
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`presence in Massachusetts, electing to open an office here to take advantage of the local
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`workforce, educational institutions, and thriving life science economy. Lilly does not deny that
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`foundational development of its product took place here, including research into the very method
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`of use that Teva claims infringes its patent. Although Lilly tries to minimize the significance of
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`that work in its reply, its own exhibits demonstrate that Massachusetts does, in fact, have a
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`significant connection to this case. Finally, Lilly wholly fails to recognize that the restrictions
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`imposed by the patent venue statute—limiting Teva’s choice of venue to one where Lilly has a
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`“regular and established place of business”—already effectively balances competing concerns
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`about convenience in the § 1404 transfer analysis. Lilly’s motion to transfer should be denied.
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`Teva’s choice of forum. Lilly no longer claims that Teva’s decision to bring this lawsuit
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`in Massachusetts was “arbitrary.” See D. 19 at 1, 6, 7. Instead, Lilly argues that this factor
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`should be discounted because “[n]either Teva entity has its principal place of business in
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`Massachusetts or is incorporated in the Commonwealth.” D. 29 at 2. This patent case, however,
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`could not have been filed in a state where Teva has its principal place of business
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`1
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 4 of 9
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`(Pennsylvania)1 or where it is incorporated (Delaware) because Lilly is not located in either state.
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`See 28 U.S.C. § 1400(b); TC Heartland LLC v. Kraft Foods Grp. Brands LLC, __ U.S. __, 137
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`S. Ct. 1514 (2017). Although the location of the plaintiff’s state of incorporation or principal
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`place of business may be a relevant consideration in non-patent cases, it makes less sense here,
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`given the restrictions already imposed by the patent venue statute. In short, Teva should not be
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`penalized for filing this case in one of the seven districts where Lilly intentionally and
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`strategically established a permanent, physical presence. See In re Cray Inc., 871 F.3d 1355,
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`1361 (Fed. Cir. 2017) (“The statute’s ‘main purpose’ was to ‘give original jurisdiction to the
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`court where a permanent agency transacting the business is located[; j]urisdiction would not be
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`conferred by ‘isolated cases of infringement,’ but ‘only where a permanent agency is
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`established.’”) (quoting 29 Cong. Rec. 1900 (1897) (statement of Rep. Lacey)).
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`Convenience of the parties. This factor weighs against transfer for multiple reasons.
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`First, Lilly does not address, let alone deny, that it has the financial means to litigate this case
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`here. That should end the inquiry. See Boateng v. Gen. Dynamics Corp., 460 F. Supp. 2d 270,
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`275 (D. Mass. 2006) (this factor “focuses on the comparative financial abilities of the parties”)
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`(citation omitted); Motorola, Inc. v. PC-Tel, Inc., 58 F. Supp. 2d 349, 358 (D. Del. 1999)
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`(requiring the defendant to “identify some unique or unexpected burden associated with
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`defending this action that militates in favor of transfer”). Second, Lilly improperly flips its
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`burden when it argues that transfer is appropriate because “Teva . . . fails to establish that it
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`would face any greater inconvenience in the Southern District of Indiana than in Massachusetts.”
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`D. 29 at 3. To overcome the presumption in favor of Teva’s choice of forum, Lilly—not Teva—
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`must “establish that, on balance, the interests of justice and convenience weigh heavily in favor
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`1 After Teva filed its initial cases in October 2017 and February 2018, it announced that it was moving its principal
`place of business from Pennsylvania to New Jersey.
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`2
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 5 of 9
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`of transfer.” Garcia-Tatupu, 249 F. Supp. 3d at 576 (citation and alteration omitted). Lilly
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`asserts, but does not explain, that litigating in Lilly’s home jurisdiction of Indiana would
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`somehow be more convenient for Teva. See D. 29 at 2-3. That simply makes no sense. Indeed,
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`Congress passed the patent venue statute, in part, to reject a line of cases that held patent cases
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`could only be filed in the defendant’s state of incorporation—in this case, Indiana. See In re
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`Cray Inc., 871 F.3d at 1360-61. In doing so, Congress recognized that it was not convenient to
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`require a patent holder to bring its lawsuit in the defendant’s state of incorporation. See id.
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`Convenience of the Witnesses. Lilly’s entire argument for this factor hinges on its claim
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`that an unspecified number of unnamed employees of Lilly will likely have relevant testimony.
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`Once again, Lilly fails to carry its burden: Lilly has neither “specif[ied] the key witnesses to be
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`called” nor provided “a general statement of what their testimony will entail,” which it “must” do
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`to succeed on this factor. Boateng, 460 F. Supp. 2d at 275 (citation omitted). In short, Lilly has
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`not given Teva or this Court the ability to assess who Lilly’s key witnesses are, how many there
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`are, what they will testify about, or why transfer on this ground is appropriate.
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` In reply, Lilly relies on a single out-of-Circuit opinion to assert that it “has provided the
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`information needed to assess the degree of convenience for the likely witnesses.” D. 29 at 3-4
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`(citing Nilssen v. Everbrite, Inc., 2001 WL 34368396, at *2-3 (D. Del. Feb. 16, 2001)). Nilssen
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`does not help Lilly. To begin, the court in Nilssen noted (1) “[t]he convenience of a witness is
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`only relevant . . . to the extent that the witness may actually be unavailable for trial in one of the
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`fora” and (2) “witnesses employed by the parties are not considered by a court conducting venue
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`transfer analysis because the parties are obligated to procure the presence of their own
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`employees.” Id. at *2 (citations omitted). Here, Lilly relies exclusively on the convenience of its
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`own employees and fails to address whether any of its witnesses would be unavailable for trial in
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 6 of 9
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`Massachusetts. Moreover, in Nilssen, the defendant did name specific witnesses as well as a
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`third-party company, in addition to its own “employees.” See id. at *3. Here, Lilly provides the
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`Court with no specifics concerning any of its anticipated witnesses. Thus, even if the Court were
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`to account for the convenience of Lilly’s own employee-witnesses (and it should not), the Court
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`is left with no way to meaningfully evaluate whether the increased convenience for those
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`witnesses strongly outweighs the decrease in convenience for basically every other witness,
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`including third-party witnesses identified by Teva that are based in Massachusetts.
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`Lilly accuses Teva of “[o]verstat[ing]”
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`the role of Cambridge-based Arteaus
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`Therapeutics. D. 29 at 4. According to Lilly, there was “significant” development work
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`immediately before and after Arteaus’s involvement, but the three years Arteaus spent
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`developing and researching the drug was only “nominal” work. Id. at 5. Lilly’s reply confirms,
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`however, that Lilly’s infringing product would not exist without Arteaus’s developmental efforts,
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`which were ongoing and substantial. Lilly’s own exhibits further confirm: “Arteaus was formed
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`in 2011 to develop the potential drug,” (D. 30-1 at 1), and Arteaus’s efforts to help turn Lilly’s
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`antibody into a marketable pharmaceutical product continued for nearly three years. D. 29 at 5.
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`In addition, according to an October 2011 press release cited in Lilly’s reply, Arteaus’s
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`involvement—even before the Phase 2 proof-of-concept study described in Teva’s opposition
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`(see D. 26 at 3-4, 13)—included a “multi-dose portion of [a Phase 1] study” that was designed
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`“to determine the safety, pharmacokinetic, and pharmacodynamics effects of the antibody.” D.
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`30-2 at 1. Lilly is also incorrect that Teva “fails to explain how Arteaus’s work purportedly links
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`Massachusetts to the events giving rise to this suit.” D. 29 at 4. Teva’s opposition outlined the
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`contours of Arteaus’s involvement in developing Lilly’s infringing product, described why
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`Arteaus was significant to that development, identified several likely witnesses (all former
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 7 of 9
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`Arteaus employees), and provided likely topics of these witnesses’ testimony. See D. 26 at 3-4,
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`11-13. Tellingly, Teva provided more information about the testimony of these third-party
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`witnesses than Lilly did about its own employee-witnesses. See D. 29 at 4 (arguing that Lilly’s
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`witnesses would testify on topics such as “marketing,” “regulatory,” and “technical work”).
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`B.
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`The Court Should Deny Lilly’s Motion to Stay the Case Pending IPR
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`Lilly’s reply does nothing to meaningfully counter Teva’s arguments against a stay. See
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`D. 26 at 15-20. Lilly does not overcome the significant body of authority from this and other
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`districts demonstrating that the Court need not even address the premature stay question at this
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`time. See id. at 16.2 Instead, Lilly cites a single, text-only docket order from this district to
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`argue that “[c]ourts in this district” have stayed litigation prior to an institution decision in a co-
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`pending IPR. See D. 29 at 7 n.2. Should the Court decide to take on the stay issue, the posture
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`of this case—where the parties are direct competitors in an emerging market—counsels against
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`granting a stay. See D. 26 at 16-17. Given the parties’ competitive business relationship,
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`coupled with Lilly’s acknowledgement in reply that any IPRs could take up to 18 months (D. 29
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`at 8) and would therefore not necessarily be completed as quickly as Lilly indicated in its
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`opening brief (see D. 19 at 19 & n.8), a stay would place Teva at a tactical disadvantage and
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`cause undue prejudice. See D. 26 at 16-17. The Court should deny Lilly’s request for a stay.
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`CONCLUSION
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`For these reasons, as well as the reasons stated in Teva’s opposition, the Court should
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`deny Lilly’s motion to transfer this litigation to the Southern District of Indiana or to stay this
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`litigation pending inter partes review.
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`2 Lilly wrongly argues that Teva cited just “a single case” (D. 29 at 7) for this proposition; rather, Teva cited
`authority collecting cases indicating that “the majority of courts . . . have postponed ruling on stay requests or have
`denied stay requests when the PTAB has not yet acted on the petition for review.” D. 26 at 16 (quoting Trover Grp.,
`Inc. v. Dedicated Micros USA, 2015 WL 1069179, at *5 (E.D. Tex. Mar. 11, 2015)).
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 8 of 9
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`Dated: January 4, 2019
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`Respectfully submitted,
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`/s/ Douglas J. Kline
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`Douglas J. Kline (BBO# 556680)
`Elaine Herrmann Blais (BBO# 656142)
`Robert Frederickson III (BBO# 670111)
`Alexandra Lu (BBO# 691114)
`Eric Romeo (BBO# 691591)
`Martin C. Topol (BBO# 696020)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
`eblais@goodwinlaw.com
`rfrederickson@goodwinlaw.com
`alu@goodwinlaw.com
`eromeo@goodwinlaw.com
`mtopol@goodwinlaw.com
`
`I. Neel Chatterjee (pro hac vice)
`GOODWIN PROCTER LLP
`601 Marshall St.
`Redwood City, CA 94063
`Tel.: (650) 752-3100
`Fax: (650) 853-1038
`nchatterjee@goodwinlaw.com
`
`Natasha Daughtrey (pro hac vice)
`GOODWIN PROCTER LLP
`601 S. Figueroa St.
`Los Angeles, CA 90017
`Tel.: (213) 426-2500
`Fax: (213) 623-1673
`ndaughtrey@goodwinlaw.com
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`Attorneys for Plaintiffs
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`Case 1:18-cv-12029-ADB Document 33 Filed 01/04/19 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I, Douglas J. Kline, hereby certify that a copy of the foregoing document, filed through
`the CM/ECF system, will be sent electronically to the registered participants as identified on the
`Notice of Electronic Filing (NEF) and paper copies shall be served by first class mail postage
`prepaid on all counsel of record who are not served through the CM/ECF system on January 4,
`2019.
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`/s/ Douglas J. Kline
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`7
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