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Bristol-Myers Squibb Co. v. Genentech

United States District Court, Ninth Circuit

July 23, 2013

BRISTOL-MYERS SQUIBB COMPANY, Plaintiff,
v.
GENENTECH and CITY OF HOPE, Defendants.

ORDER GRANTING DEFENDANTS' MOTION TO TRANSFER VENUE

SUSAN ILLSTON, District Judge.

Defendants' motion to transfer venue is scheduled for a hearing on July 26, 2013. Pursuant to Civil Local Rule 7-1(b), the Court finds this matter is appropriate for resolution without oral argument, and VACATES the hearing. For the reasons set forth below, the Court GRANTS the motion to transfer venue and TRANSFERS this case to the United States District Court for the Central District of California.

BACKGROUND

On May 9, 2013, plaintiff Bristol-Myers Squibb Company ("Bristol-Myers") filed this action for declaratory relief against defendants Genentech and City of Hope. The complaint seeks a declaration that U.S. Patent No. 6, 331, 415, entitled "Methods of Producing Immunoglobulins, Vectors and Transformed Host Cells for Use Therein, " (the "Cabilly II Patent"), and U.S. Patent No. 7, 923, 221, entitled "Methods of Making Antibody Heavy and Light Chains Having Specificity for a Desired Antigen, " (the "Cabilly III Patent") are invalid and not infringed by two of plaintiff's products, Erbitux® and Yervoy®. The complaint alleges that "[d]efendants have asserted that the Cabilly Patents broadly cover the use of certain well-known, conventional recombinant methods to produce any antibody product in any type of host cell, " and that "[t]hrough its statements and actions, Genentech has made clear to the biopharmaceutical industry generally, and to Plaintiff in particular, that it contends that the claims of the Cabilly Patents effectively preclude others from commercially manufacturing recombinant monoclonal antibodies without Genentech's permission." Compl. ¶¶ 3, 36.

Plaintiff Bristol-Myers is a Delaware corporation with its principal place of business in New York. Compl. ¶ 8. Defendant Genentech is a Delaware corporation with its principal place of business in South San Francisco. Id. ¶ 9. Defendant City of Hope is a not-for-profit hospital and medical research center in Duarte, California, which is near Los Angeles. Id. ¶ 10.

Since 2003, Judge Pfaelzer of the Central District of California has presided over a number of lawsuits involving the Cabilly patents. In 2003, MedImmune sued Genentech and City of Hope seeking a declaration that the Cabilly II patent was invalid and not infringed by MedImmune. MedImmune Inc. v. Genentech Inc., et al., No. 2:03-cv-02567 (C.D. Cal. filed Apr. 11, 2003). The parties engaged in discovery, and Judge Pfaelzer issued a claim construction order and ruled on other substantive motions. After extensive litigation, the case settled in 2008. Durie Decl. ¶¶ 4-5; Defs' Request for Judicial Notice, Ex. D (docket sheet).[1]

In 2008, Centocor filed suit against Genentech and City of Hope seeking a declaration that the Cabilly II patent was invalid and not infringed by Centocor. Centocor v. Genentech Inc., et al., No. 2:08-cv-03573 (C.D. Cal. filed May 30, 2008). The Centocor case was originally assigned to a different judge in the Central District, and pursuant to Central District General Order 08-05 (Related Cases) the case was transferred to Judge Pfaelzer. Durie Decl. ¶¶ 6-7; Defs' Request for Judicial Notice, Ex. E (docket sheet). Judge Pfaelzer presided over discovery, issued a claim construction, and heard argument on summary judgment motions, which were pending when the case settled. Durie Decl. ¶¶ 6-7.

In 2010, Glaxo Group Limited, GlaxoSmithKline LLC ("GSK") filed a declaratory relief action against Genentech and City of Hope in the Northern District of California, alleging non-infringement and invalidity of the Cabilly II patent. Glaxo Group Limited v. Genentech Inc., et al., No. C 10-00675 JSW (N.D. Cal. filed Feb. 17, 2010). The case was assigned to Judge White, who granted Genentech's motion to transfer the case to the Central District of California. Glaxo Group Limited v. Genentech Inc., et al., No. C 10-00675 JSW, 2010 WL 1445666 (N.D. Cal. Apr. 12, 2010). Judge White held,

[J]udicial economy strongly favors transfer to the Central District of California. Judge Pfaelzer of the Central District of California has already heard portions of two related declaratory judgment actions brought against Genentech and City of Hope by other licensees of the Cabilly II Patent. See MedImmune, Inc. v. Genentech, Inc., No. 2:03-cv-02567 (C.D. Cal. filed Apr. 11, 2003); see also, Centocor Inc. v. Genentech, Inc., No. 2:08-cv-03573 (C.D. Cal. filed May 30, 2008). The MedImmune case has settled, but involved extensive litigation including discovery, claim construction, and a decision by the United States Supreme Court. The Centocor case is still pending, but the Court has already completed claim construction and the parties have engaged in document and deposition discovery. Judge Pfaelzer has already expended great resources in constructing and interpreting the Cabilly II Patent in the MedImmune case and the Centocor case. Allowing the same court to construe the same patent in this action would save substantial resources of both the parties and the court. Thus, transferring this related action to the same court is the most effective administration of justice.

Id. at *3. After transfer, the case was assigned to Judge Pfaelzer, who again presided over discovery and claim construction. Durie Decl. ¶¶ 8-9. The parties filed summary judgment motions, which were pending when the case settled. Id., Defs' Request for Judicial Notice, Ex. F (docket sheet).

In 2011, Human Genome Sciences, Inc. ("HGS") brought two lawsuits in the District of Delaware against Genentech and City of Hope, seeking a declaration of non-infringement, invalidity and unenforceability of the Cabilly II and Cabilly III patents. Human Genome Sciences, Inc. v. Genentech Inc., et al., No. 11-082-LPS (D. Del. filed Jan. 25, 2011) (concerning Cabilly II patent); Human Genome Sciences, Inc. v. Genentech Inc., et al., No. 11-328-LPS (D. Del. filed Apr. 12, 2011) (concerning Cabilly III patent). In July 2011, Judge Stark of the District of Delaware transferred both cases to the Central District of California, where they were assigned to Judge Pfaelzer. Human Genome Sciences, Inc. v. Genentech Inc., et al., No. 11-082-LPS, 2011 WL 2911797 (D. Del. July 18, 2011) (concerning Cabilly II patent). In granting the motions to transfer the cases, Judge Stark found, inter alia,

The cases that have been or are being litigated in the Central District have given the presiding judge there, U.S. District Judge Mariana R. Pfaelzer, an extensive nine-year-long experience with the Cabilly II patent. Judge Pfaelzer has presided over four litigations centered around the Cabilly patents, two of which are still pending. (See Tr. at 7) Some of these actions involve some of the same parties, the same accused product (i.e., Benlysta), and same patents (i.e., the Cabilly II and III patents) as are involved in the cases pending here, and all of the Central District cases involve technologies, products, and a field of prior art that are at least similar to those involved in the cases pending here. Although two of the prior cases in front of Judge Pfaelzer settled before she addressed the merits, among the four actions she has issued three claim construction orders, heard fourteen summary judgment motions, presided over nine hearings, issued twenty-five substantive orders, and reviewed over 800 docket entries. She considers herself "a student of Cabilly II, " being very familiar with the prosecution history, including the interference and reexamination record. (D.I. 15 Ex. A at 4) Although Judge Pfaelzer denied a motion to "add Benlysta to [her] case, " she did state that she "would be prepared to take the Benlysta case, " although "that's up to the other judge." (D.I. 25 Ex. A at 77) Judge Pfaelzer went as far as to say, "I would certainly be happy to take that [the Benlysta] case." (Id. at 79) Judge Pfaelzer seems to have denied the motion to add HGS in her case to afford this Court the opportunity to resolve the present transfer motions. (See id. at 82) ("You can do whatever you do in Delaware. I'm prepared to take that. If the judge agrees, we could expedite it, but I'm not going to add another product to this case until that judge has a chance to look at the problem.").
Accordingly, the Court finds the practical considerations-and most especially that Judge Pfaelzer has almost a decade of experience with the Cabilly II patent and is willing to preside over the instant actions, in addition to the related actions ...

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