Senju Pharmaceutical Co. v. Metrics, Inc.
96 F. Supp. 3d 428
D.N.J.2015Background
- Plaintiffs (Senju Pharmaceutical; Bausch & Lomb and subsidiary) own three U.S. patents covering bromfenac formulations (Prolensa®) and sued after Metrics filed an ANDA with Paragraph IV certifications challenging two patents.
- Defendants initially included Metrics, Coastal, Mayne Pharma Group Limited (Australia), and Mayne Pharma (USA); only Metrics and Mayne Pharma Group Limited remained for jurisdictional rulings.
- Metrics is a North Carolina corporation, registered to do business in New Jersey and accepted service through a New Jersey registered agent; it sells products nationwide including into New Jersey.
- Mayne Pharma Group Limited is an Australian parent with no apparent offices, employees, or direct sales in New Jersey; plaintiffs relied on predecessor/subsidiary litigation and a possible supplier relationship with New Jersey-based Johnson‑Matthey to plead contacts.
- Defendants filed inter partes review (IPR) petitions at the PTAB challenging two patents shortly after the ANDA filing; plaintiffs moved to enjoin Defendants from participating in PTAB IPRs, arguing § 315(a)(1) and the first‑filed rule barred IPR.
- The Court (1) held Metrics is subject to New Jersey jurisdiction because it accepted in‑state service through its registered agent; (2) declined to find Mayne Pharma Group Limited subject to general jurisdiction but allowed limited jurisdictional discovery on specific‑jurisdiction ties to Johnson‑Matthey; and (3) denied plaintiffs’ motion to enjoin the PTAB proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Metrics | Service on Metrics’ NJ registered agent establishes jurisdiction | In‑state service alone insufficient; Metrics lacks continuous, systematic NJ contacts | Held: Metrics is subject to NJ jurisdiction because it accepted service via registered agent (consent) |
| Personal jurisdiction over Mayne Pharma Group Limited (general) | Predecessors’ NJ litigation and prior NJ address render parent "at home" | Parent has no present offices, employees, sales, or registration in NJ; contacts insufficient for general jurisdiction | Held: No general jurisdiction; contacts do not render parent "at home" in NJ |
| Personal jurisdiction over Mayne Pharma Group Limited (specific) | Mayne’s tie to NJ supplier (Johnson‑Matthey) could support specific jurisdiction | No clear evidence the parent contracted with or directed relevant acts through NJ supplier | Held: Specific jurisdiction not established on present record; limited discovery (30 days) permitted on any Mayne–Johnson‑Matthey connection |
| Injunction to stop PTAB IPRs (§ 315(a)(1) and first‑filed rule) | ANDA Paragraph IV filing constitutes a "civil action" under § 315(a)(1); first‑filed rule and All Writs Act require enjoining PTAB | Paragraph IV is an administrative FDA filing, not a judicial civil action; PTAB institution is final and distinct; first‑filed rule does not apply to PTAB | Held: Denied — § 315(a)(1) does not bar IPR because a Paragraph IV notice is not a "civil action," and the court will not enjoin PTAB proceedings under the first‑filed rule or All Writs Act |
Key Cases Cited
- Provident Nat’l Bank v. Cal. Fed. Sav. & Loan Ass’n, 819 F.2d 434 (3d Cir.) (plaintiff bears prima facie burden to show forum contacts)
- Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324 (3d Cir.) (jurisdictional facts may be supported by affidavits; resolve conflicts for plaintiff)
- Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344 (Fed. Cir.) (accept uncontroverted jurisdictional allegations; resolve conflicts in plaintiff’s favor)
- Mellon Bank v. Farino, 960 F.2d 1217 (3d Cir.) (jurisdictional discovery appropriate where plaintiff can supplement allegations)
- Daimler AG v. Bauman, 571 U.S. 117 (2014) (general jurisdiction only where corporation is essentially "at home")
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (specific jurisdiction requires purposeful availment/directing activities to forum)
- Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) (minimum contacts and fair play due process test)
- Burnham v. Superior Court of California, 495 U.S. 604 (1990) (in‑state personal service confers jurisdiction via transient jurisdiction)