Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc.
2012 U.S. Dist. LEXIS 6528
| D. Mass. | 2012Background
- Plaintiffs Momenta and Sandoz own the '886 and '466 patents related to generic enoxaparin manufacture.
- Amphastar, IMS, Watson, and Watson Pharma are alleged to infringe those patents and to solicit sale of infringing products in the United States.
- In July 2010 Momenta/Sandoz began marketing a generic enoxaparin product; FDA approved Amphastar’s generic; Watson issued a press release in 9/2011 planning a Q4 launch.
- Plaintiffs filed suit on 9/21/2011; a preliminary injunction is in effect and on appeal along with related stay/dissolution rulings.
- Amended complaint (10/17/2011) added Watson Pharma as a defendant; defendants move to dismiss or transfer the case to the Central District of California.
- The court address includes personal jurisdiction, venue, and Rule 12(b)(6) challenges, with jurisdictional discovery motions deemed moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has personal jurisdiction over all defendants | Plaintiffs assert Watson has general jurisdiction; Amphastar/IMS have sufficient Massachusetts contacts for specific jurisdiction | Watson argues no MA presence; Amphastar/IMS deny MA activities | Watson subject to general jurisdiction; Amphastar and IMS subject to specific jurisdiction in MA |
| Whether venue is proper in Massachusetts and whether transfer is appropriate | MA is proper venue given prior filings and forum interests | Transfer to CA would be more convenient for defendants | Venue proper in MA; transfer denied; forum chosen by plaintiffs maintained |
| Whether the Hatch-Waxman safe harbor defeats the 12(b)(6) claim | Safe harbor does not bar infringement here | Safe harbor provides immunity for certain activities | Safe harbor does not absolve alleged infringement under 271(g); 12(b)(6) denied |
| Whether a transfer under 28 U.S.C. § 1404(a) is warranted | Massachusetts forum aligns with ongoing proceedings and witnesses | California witnesses and activities would be more convenient | No transfer; plaintiff's forum maintained |
Key Cases Cited
- 3D Systs., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373 (Fed. Cir. 1998) (tripartite specific jurisdiction analysis)
- Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998) (minimum contacts and reasonableness for jurisdiction)
- J. McIntyre Machinery, Ltd. v. Nicastro, 131 S. Ct. 2780 (U.S. 2011) (purposeful availment and有限 contacts in massachusetts context)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) (due process and minimum contacts framework)