United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
L. WOLF, District Judge.
case, plaintiff Dana-Farber Cancer Institute, Inc.
("Dana-Farber") seeks to correct inventorship of
five patents. Defendants Ono Pharmaceuticals, Ltd.
("Ono"), Tasuku Honjo ("Honjo"), and E.R.
Squibb & Sons, L.L.C. and Bristol-Myers Squibb, Co.
(collectively "BMS") have moved to transfer this
case to the District of Delaware, where they are litigating
earlier-filed cases involving three of the five patents at
issue here. Dana-Farber opposes that motion.
court finds that there is a likelihood of substantial overlap
between the instant case and the Delaware litigation.
However, the Delaware court is best suited to assess the
extent of this overlap and determine whether transfer would
be in the interest of justice. Therefore, the defendants are
being ordered to file promptly a motion requesting a decision
from the District of Delaware concerning whether this case
should be transferred to that District. If the court in
Delaware finds that it is most appropriate that this case
proceed in tandem with the Delaware litigation, this court
will order that it be transferred pursuant to 28 U.S.C. Â§
1404(a). This case is being stayed pending resolution of that
September 25, 2015, Dana-Farber filed this action in the
District Court of Massachusetts seeking to correct
inventorship of five cancer immunotherapy patents (the
"Honjo patents"). The Honjo patents are assigned to
Ono and Honjo and licensed to BMS. Dana-Farber alleges that
its employee, Dr. Gordon Freeman, and a collaborating
scientist, Dr. Clive Wood, are joint inventors of the methods
described in the Honjo patents. It further alleges that, as
Dr. Freeman's assignee, it is a co-owner of the Honjo
patents. Pursuant to a joint agreement, BMS and Honjo
answered the complaint on December 21, 2015. Dana-Farber
served its first discovery requests on BMS and Honjo in
Honjo patents are also being litigated in the District of
Delaware. On September 4, 2014, June 30, 2015, and July 7,
2015, Ono, Honjo, and BMS filed three actions against Merck &
Co., Inc. and Merck Sharp & Dohme Corp. (collectively
"Merck") The three actions have not been
consolidated, but have been coordinated to have identical
pretrial schedules. Together, the three complaints allege
that Merck has infringed three of the five Honjo patents. In
its defense, Merck asserts, among other things, that the
Honjo patents are invalid.
February 10, 2016, Ono, Honjo, and BMS moved to transfer this
case brought by Dana-Farber in Massachusetts to Delaware,
where it could be coordinated with the three pending
infringement cases. See Docket No. 50. Alternatively, they
moved to dismiss for lack of personal jurisdiction and
failure to join a necessary party, without prejudice to
Dana-Farber refiling in the District of Delaware. See Docket
Nos. 53, 56. Dana-Farber opposes all three motions on the
grounds that the District of Delaware would not have
jurisdiction and, in any event, transfer is not in the
interest of justice. BMS and Honjo have not responded to
discovery requests, and have moved to stay this case until
the motion to transfer and motions to dismiss are decided.
See Docket No. 80.
February 19, 2016, Merck, the defendant in the Delaware
cases, served subpoenas on Dana-Farber and its employee, Dr.
Freeman. Merck seeks documents relating to the invention of
the methods described in the Honjo patents. In response,
Dana-Farber moved to modify the subpoenas by postponing the
reply date until BMS and Honjo responded to its January,
2016, discovery requests. See 16-mc-91097, Docket No.1.
Dana-Farber argues that any information disclosed to Merck
will reach Ono, Honjo, and BMS though the Delaware
litigation, prejudicing its ability to prosecute this
Massachusetts case. Merck argues that it needs the requested
documents to conduct depositions before discovery closes, on
May 27, 2016, in the Delaware litigation.
present procedural posture complicates both this case and the
three Delaware cases. Merck asserts that it will be
prejudiced if it does not receive a timely response from
Dana-Farber. Dana-Farber asserts that it will be prejudiced
if it does not first receive discovery from BMS and Honjo.
Ono, Honjo, and BMS assert that they will be prejudiced if
litigation proceeds in parallel in two districts.
these circumstances, threshold issues are whether this case
should be litigated in Massachusetts or Delaware, and which
court should decide that question.
between federal district courts... the general principle 1S
to avoid duplicative litigation." Colorado River
Water Conservation Dist. v. United States, 424 U.S. 800,
817 (1976) "The concern manifestly is to avoid the waste
of duplication, to avoid rulings which may trench upon the
authority of sister courts, and to avoid piecemeal resolution
of issues that call for a uniform result." W. Gulf
Mar. Ass'n v. ILA Deep Sea Local 24, S. Atl. & Gulf Coast
Dist. of ILA, AFL-CIO, 751 F.2d 721, 729 (5th Cir. 1985)
Accordingly, pursuant to 18 U.S.C. 1404 (a), "a district
court may transfer any civil action to any other district or
division where it might have been brought or to any district
or division to which all parties have consented." See
TPM Holdings, Inc. v. Intra-Gold Indus., Inc., 91
F.3d 1, 4 (1st Cir. 1996); Cianbro Corp. v.
Curran-Lavoie, Inc., 814 F.2d 7, 8 n.2 (1st Cir. 1987);
see also In re Medrad, Inc., 215 F.3d 1341 (Fed.
Cir. 1999) ("[I]t is within the district court's
discretion to transfer a related case in the interest of
justice to a forum that may not be more convenient [to the
two suits in different districts are identical, or nearly so,
"the usual practice is for the court that first had
jurisdiction to resolve the issues and the other court to
defer." TPM Holdings, 91 F.3d at 4;
Cianbro, 814 F.2d at 11 ("Where identical
actions are proceeding concurrently in two federal courts the
first filed action is generally preferred in a
choice-of-venue decision."). "But where the overlap
between two suits is less than complete, " the decision
whether to transfer and consolidate or to proceed in parallel
"is made case by case... based on such factors as the
extent of overlap, the likelihood of conflict, [and] the
comparative advantage and the interest of each forum in
resolving the dispute." TPM Holdings, 91 F.3d
at 4 (citing Colorado River, 424 U.S. at 817).
"Complete identity of neither the parties nor of the
lawsuit itself is required for dismissal or transfer of a
case filed subsequently to an action with substantial overlap
of substantive issues." Harris Cty., Tex. v. CarMax
Auto Superstores Inc., 177 F.3d 306, 319 (5th Cir.
decision as to whether there is sufficient overlap to warrant
transferring a case is generally made by "the
jurisdiction first seized of the issues." W. Gulf
Mar. Ass'n, 751 F.2d at 730 (quoting Mann
Manufacturing, Inc. v. Hortex, Inc., 439 F.2d 408 n. 6
(5th Cir. 1971)); Cadle Co. v. Whataburger of Alice,
Inc., 174 F.3d 599, 606 (5th Cir. 1999); Boston &
Maine Corp. v. United Transp. Union, 110 F.R.D. 322, 329
(D. Mass. 1986). Accordingly, while the court in the
later-filed action may decide whether there is a
"likelihood of substantial overlap, " the court in
the first-filed action should determine "whether there
actually [is] ...