United States District Court, S.D. California
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANT'S MOTION (ECF NO. 30)
Janis L. Sammartino United States District Judge.
before the Court is Eli Lilly and Company's Motion
(“Mot., ” ECF No. 24) seeking to dismiss or
transfer this action for improper venue under Federal Rule of
Civil Procedure 12(b)(3); strike allegations in Plaintiff
Genentech, Inc.'s First Amended Complaint under Federal
Rule of Civil Procedure 12(f); and dismiss Plaintiff's
willful infringement claim under Federal Rule of Civil
Procedure 12(b)(6). Plaintiff filed a Response in Opposition
to (“Opp'n, ” ECF No. 48) and Defendant filed
a Reply in Support of (“Reply, ” ECF No. 50) the
Motion. After reviewing the Parties' arguments and the
law, the Court rules as follows.
case came before the Court on July 3, 2019, when Plaintiff
Genentech, Inc., filed suit. First Amended Complaint
(“FAC”) ¶ 5, ECF No. 29. Plaintiff is a
Delaware corporation with its principal place of business in
San Francisco, California. Id. ¶ 1. Defendant
Eli Lilly and Company is an Indiana corporation with its
principal place of business in Indiana. Id. ¶
2. Defendant has owned and operated the Lilly Biotechnology
Center in San Diego, California, since 2009. Id.
brings suit under 35 U.S.C. § 271 for Defendant's
alleged infringement of U.S. Patent No. 10, 011, 654 (the
“'654 patent”). Id. ¶¶ 3,
25-43. Plaintiff alleges that Defendant's
“manufacture, use, importation, offer for sale, and/or
sale of Taltz® (containing ixekizumab as its active
ingredient), a prescription medicine approved by the U.S.
Food and Drug Administration to treat psoriatic arthritis and
moderate to severe plaque psoriasis in adults, ”
id. ¶ 3, “constitutes an act of
infringement of at least claims 1, 4, 5, and 7 of the
'654 patent.” Id. ¶ 26.
Plaintiff filed suit, Defendant filed a motion to dismiss the
original complaint and strike allegations therein. ECF No.
24. Before filing any response, the Parties filed a joint
motion for leave to file an amended complaint, ECF No. 27,
which the Court granted. ECF No. 28. Plaintiff then filed its
FAC and Defendant filed the present Motion. Shortly after
Defendant filed this Motion, Plaintiff filed an ex
parte motion for leave to seek expedited discovery
related to Defendant's contentions that venue in this
district is improper. ECF No. 30. The Court granted the
motion and allowed limited discovery on the issue of venue.
ECF No. 39. Following the close of venue discovery, Plaintiff
filed its Opposition and Defendant filed its Reply. The
Court, finding this matter suitable to take under submission
without oral argument, now considers the present Motion.
Motion to Dismiss for Improper Venue
contends that venue is improper in the Southern District of
California because Plaintiff failed to allege sufficient
facts to make a plausible claim that Defendant committed acts
of infringement within the district. Mot. at 17-18. Defendant
also contends that Plaintiff's allegations for venue
purposes are inadequate because the alleged acts of
infringement are not related to Defendant's established
place of business in the District. Id. at 19-22.
Defendant also contends that if the Court deems venue is
improper but does not dismiss, the Court should transfer the
case to the Southern District of Indiana under 28 U.S.C.
§ 1404(a). Id. at 25-28.
Sufficiency of Plaintiff's Infringement Allegations
for Venue Purposes
may move to dismiss an action for improper venue pursuant to
Federal Rule of Civil Procedure 12(b)(3). In deciding a Rule
12(b)(3) motion, a court need not accept the pleadings as
true and may consider facts outside the pleadings. Murphy
v. Schneider Nat'l, Inc., 362 F.3d 1133, 1137 (9th
Cir. 2004). “Plaintiff bears the burden of showing that
venue is proper.” Kaia Foods, Inc. v.
Bellafiore, 70 F.Supp.3d 1178, 1183 (N.D. Cal. 2014)
(citing Piedmont Label Co. v. Sun Garden Packing
Co., 598 F.2d 491, 496 (9th Cir. 1979)).
patent infringement actions, 28 U.S.C. § 1400(b)
“is the sole and exclusive provision controlling venue
in patent infringement actions.” TC Heartland LLC
v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514, 1516-17
(2017) (quotations omitted). Under section 1400(b), venue is
proper (1) “in the judicial district where the
defendant resides, or [(2)] where the defendant has committed
acts of infringement and has a regular and established place
of business.” 28 U.S.C. § 1400(b).
case, Plaintiff asserts venue under the second prong only;
thus, the Court must determine if Defendant “committed
acts of infringement” and maintains a “regular
and established place of business” within this
district. There is no dispute that Defendant has a
“regular and established place of business.”
Defendant concedes that the Lilly Biotechnology Center
located in San Diego, California, meets this requirement.
See Mot. at 12; ECF No. 42-3 at 16; ECF No. 43 at 9.
The only question is whether Plaintiff has adequately alleged
acts of infringements to satisfy venue. The Court concludes
support venue, allegations that a defendant committed acts of
direct infringement, induced infringement, or contributed to
infringement are sufficient. Seven Networks, LLC v.
Google LLC, 315 F.Supp.3d 933, 942 (E.D. Texas 2018).
While a defendant may contest the allegations, the Court need
not delve into the merits of infringement when considering
whether venue is proper. Id. (citing In re
Cordis Corp., 769 F.2d 733, 736-37 (Fed. Cir. 1985)