Medicis Pharmaceutical Corporation v. Nycomed US Inc.
1:10-cv-00419
D. Del.Mar 31, 2011Background
- This is a Delaware federal court memorandum order granting Nycomed U.S. Inc.'s transfer motion and denying moot its stay request.
- The dispute concerns Nycomed's ANDA for Fluocinonide Cream 0.1% and Medicis' VANOS patents: '001, '424, '422, and '738.
- Medicis filed infringement actions May 19, 2010 in Delaware and in New York; the cases progressed at different speeds.
- The Delaware and New York actions are construed as mirror images, with parallel litigation in two fora.
- The court applies 28 U.S.C. § 1404(a) and Jumara factors to determine which forum is more convenient and just.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is transfer under 1404(a) warranted? | Medicis favors Delaware as plaintiff's chosen forum. | New York is the center of the dispute and more convenient. | Transfer granted. |
| Does the first-filed rule control this transfer decision? | Delaware action is first filed, supporting retention. | First-filed analysis inconclusive; not controlling. | Not controlling; transfer still warranted. |
| Should plaintiff's forum choice receive substantial deference? | Medicis chose Delaware for legitimate reasons; mandate deference. | Balance of convenience weighs toward New York. | Factored, but outweighed by other considerations in favor of transfer. |
| What factors justify transfer under Jumara? | Factors favor maintaining suit in Delaware due to plaintiff's forum preference. | Factors include speed, center of dispute, and convenience; favor New York. | Jumara factors support transfer to New York. |
| Was the stay of proceedings moot given the transfer? | Stay pending transfer could conserve resources. | No need for stay; motion to stay denied as moot. | Stay denied as moot. |
Key Cases Cited
- Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) (broad private/public factors for transfer analysis)
- Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (1968) (discretion in transfer decisions and convenience)
- Bergman v. Brainin, 512 F. Supp. 972 (D. Del. 1981) (burden on movant to show balance of convenience strongly favors transfer)
- In re M.L.-Lee Acquisition Fund II, L.P., 816 F. Supp. 973 (D. Del. 1993) (deference to plaintiff's forum choice when legitimate)
- G.R. Bard, Inc. v. Guidant Corp., 997 F. Supp. 556 (D. Del. 1998) (transfer considerations and forum preference)
- Continental Cas. Co. v. American Home Assurance Co., 61 F. Supp. 2d 128 (D. Del. 1999) (analysis under private/public interests framework)
- E.E.O.C. v. University of Pennsylvania, 850 F.2d 969 (3d Cir. 1988) (comity and efficiency considerations in forum selection)