Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 1 of 20 PageID #: 291
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`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`C.A. No. 15-264 (GMS)
`
`))))))))))
`
`HELSINN HEALTHCARE S.A. and
`ROCHE PALO ALTO LLC,
`
`
`Plaintiffs,
`
`
`v.
`
`HOSPIRA, INC.,
`
`
`Defendant.
`
`
`PLAINTIFFS’ OPENING BRIEF IN SUPPORT
`OF THEIR MOTION TO STAY THE
`SECOND-FILED CASE IN THE DISTRICT OF DELAWARE
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`Maryellen Noreika (#3208)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`kjacobs@mnat.com
`mnoreika@mnat.com
`
`Attorneys for Plaintiffs
`Helsinn Healthcare S.A. and
`Roche Palo Alto LLC
`
`
`OF COUNSEL:
`
`Joseph M. O’Malley, Jr.
`Eric W. Dittmann
`Young J. Park
`Isaac S. Ashkenazi
`Gary Ji
`Angela C. Ni
`Dana Weir
`PAUL HASTINGS LLP
`75 East 55th Street
`New York, NY 10022
`(212) 318-6000
`
`Attorneys for Plaintiff
`Helsinn Healthcare S.A.
`
`Mark E. Waddell
`LOEB & LOEB LLP
`345 Park Avenue
`New York, NY 10154
`(212) 407-4127
`
`Attorneys for Plaintiff
`Roche Palo Alto LLC
`
`December 7, 2015
`
`
`
`
`
`REDACTED -
`PUBLIC VERSION
`
`Redacted Version Filed: December 14, 2015
`
`

`
`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 2 of 20 PageID #: 292
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`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`STATEMENT OF THE NATURE AND STAGE OF THE PROCEEDING ...................1
`INTRODUCTION AND BACKGROUND ....................................................................1
`SUMMARY OF ARGUMENT ......................................................................................3
`STATEMENT OF FACTS .............................................................................................4
`A.
`Prior Litigation History Involving the Patents-in-Suit ..........................................4
`B.
`Plaintiffs’ First-Filed Action Against Hospira in New Jersey...............................6
`C.
`Plaintiffs’ Second-Filed Action Against Hospira in Delaware .............................7
`ARGUMENT .................................................................................................................8
`A.
`A Stay Will Conserve the Resources of the Parties and the Court ........................9
`(1)
`Hospira Will Not Be Prejudiced by a Stay
`Because Discovery Is Proceeding in the New Jersey Action ....................9
`Staying This Case Would Promote Judicial Economy ............................ 11
`(2)
`The Early Stage of Litigation Favors a Stay ........................................... 13
`(3)
`The First-Filed Rule Also Favors a
`Stay of the Second-Filed Delaware Action ........................................................ 14
`CONCLUSION ............................................................................................................ 15
`
`B.
`
`
`
`
`i
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 3 of 20 PageID #: 293
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`CASES
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`Nos. 12-1107, 12-1109, 12-1110, 2014 U.S. Dist. LEXIS 47430 (D. Del. Apr.
`7, 2014) ................................................................................................................................. 9
`
`Cisco Systems Inc. v. SynQor, Inc.,
`No. 11-86, 2011 U.S. Dist. LEXIS 36355 (D. Del. Apr. 1, 2011) ......................................... 12
`
`Corixa Corp. v. Idec Pharms. Corp.,
`No. 01-615-GMS, 2002 U.S. Dist. LEXIS 2980 (D. Del. Feb. 25, 2002) ............................. 14
`
`In re Cyclobenzaprine Hydrochloride Extended-Releases Capsule Patent Litig.,
`693 F. Supp. 2d 409 (D. Del. 2010) ..................................................................................... 15
`
`Exxon Mobil Corp. v. Saudi Basic Indus. Corp.,
`544 U.S. 280 (2005) ............................................................................................................ 14
`
`First American Title Ins. Co. v. Maclaren, L.L.C.,
`No. 10-363-GMS, 2012 U.S. Dist. LEXIS 31508 (D. Del. Mar. 9, 2012) ............................... 9
`
`Freedom Mortg. Corp. v. Irwin Fin. Corp.,
`No. 08-146-GMS, 2009 U.S. Dist. LEXIS 24208 (D. Del. Mar. 23, 2009) ........................... 12
`
`Neste Oil Oyj v. Dynamic Fuels, LLC,
`No. 12-1744-GMS, 2013 U.S. Dist. LEXIS 92416 (D. Del. July 2, 2013) ............................ 13
`
`Novartis AG v. Ezra Ventures, LLC,
`No. 15-95, 2015 U.S. Dist. LEXIS 89833 (E.D. Ark. July 10, 2015) .................................... 15
`
`Novartis AG v. HEC Pharm Co.,
`No. 15-1647, 2015 U.S. Dist. LEXIS 122391 (D.N.J. Sept. 14, 2015)............................ 10, 15
`
`Pfizer Inc. v. Mylan Inc.,
`No. 15-4, 2015 U.S. Dist. LEXIS 85889 (N.D. W. Va. Apr. 24, 2015)....................... 9, 10, 15
`
`Pfizer Inc. v. Sandoz, Inc.,
`No. 09-742, 2010 U.S. Dist. LEXIS 4527 (D. Del. Jan. 20, 2010) ........................................ 15
`
`Salix et al., v. Mylan,
`No. 14-152 (N.D. W. Va. Feb. 18, 2015) ....................................................................... 10, 15
`
`Smart Audio Techs., LLC v. Apple, Inc.,
`910 F. Supp. 2d 718 (D. Del. 2012) ..................................................................................... 13
`
`
`
`
`
`
`ii
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 4 of 20 PageID #: 294
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Zazzali v. Wavetronix LLC,
`Nos. 12-1211-GMS, et al., 2014 U.S. Dist. LEXIS 135116 (D. Del. Sept. 25,
`2014) ................................................................................................................................... 12
`
`STATUTES
`
`Hatch-Waxman Act, 21 U.S.C. § 355(j), et seq............................................................................ 1
`
`
`
`
`iii
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`
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 5 of 20 PageID #: 295
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`
`I.
`
`STATEMENT OF THE NATURE AND STAGE OF THE PROCEEDING
`
`On March 23, 2015, Plaintiffs Helsinn Healthcare S.A. and Roche Palo Alto LLC
`
`(“Plaintiffs”) filed a complaint against Hospira Inc. (“Hospira”) in the District of New Jersey,
`
`Civil Action No. 15-2077 (“the New Jersey action”). (Ex. A, D.I. 1 (Civ. No. 15-2077).)
`
`Subsequently, on March 25, 2015, Plaintiffs filed a protective action against Hospira in this
`
`Court (“the Delaware action”). (D.I. 1.) As explained in Plaintiffs’ Complaint, the Delaware
`
`action was filed to ensure preservation of Plaintiffs’ Hatch-Waxman statutory stay of FDA
`
`approval. (Id. at ¶ 54.)
`
`The New Jersey and Delaware actions are the same. Both actions arise under the Hatch-
`
`Waxman Act, 21 U.S.C. § 355(j), et seq. They also both allege infringement of the same patents,
`
`i.e., U.S. Patent Nos. 7,947,724 (“the ’724 patent”), 7,947,725 (“the ’725 patent”), 7,960,424
`
`(“the ’424 patent”), 8,598,219 (“the ’219 patent”), and 8,729,094 (“the ’094 patent”)
`
`(collectively, “the patents-in-suit”). And both are based on Hospira’s filing of Abbreviated New
`
`Drug Application (“ANDA”) No. 207005 seeking permission to manufacture and sell a generic
`
`version of Aloxi® before the expiration of the patents-in-suit.
`
`On June 8, 2015, Hospira filed its answer and counterclaims to Plaintiffs’ complaint in
`
`the Delaware action. (D.I. 7.) Plaintiffs answered those counterclaims on November 13, 2015.
`
`(D.I. 17.) The parties have jointly submitted a request to extend the filing date for the Joint
`
`Status Report and Proposed Scheduling Order from December 2, 2015, to January 15, 2016.
`
`(D.I. 18.) Discovery has not yet commenced in the Delaware action.
`
`II.
`
`INTRODUCTION AND BACKGROUND
`
`Plaintiffs respectfully submit this motion to stay the second-filed Delaware action
`
`pending resolution of a motion to dismiss for lack of personal jurisdiction filed by Hospira in the
`
`first-filed New Jersey action (“Hospira’s motion to dismiss”). If Hospira’s motion to dismiss is
`
`1
`
`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 6 of 20 PageID #: 296
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`denied, Plaintiffs intend file a motion to dismiss and/or transfer the Delaware action to the
`
`District of New Jersey so that these litigations proceed only in one forum. In the meantime,
`
`discovery is already proceeding in the New Jersey action.
`
`The Delaware action against Hospira is one of several Hatch-Waxman cases involving
`
`the drug product Aloxi® and the family of patents covering that drug product (“the Aloxi®
`
`patents”), all of which claim priority to the same provisional application. The first of those
`
`actions, involving three “first-to-file” generic manufacturers, was filed in the District of New
`
`Jersey in 2011 (“the 2011 New Jersey Action”) and assigned to Judge Mary L. Cooper. On
`
`November 16, 2015, after overseeing the 2011 New Jersey Action for more than four years and
`
`holding a 12-day bench trial, Judge Cooper held that four of the five patents-in-suit in the instant
`
`action1 are valid and infringed. (Ex. B, D.I. 361 (Civ. No. 11-3962).)
`
` As such, Judge Cooper has extensive experience with the patents-in-suit and the accused
`
`generic products (which, like the first-filed ANDAs at issue in the 2011 New Jersey Action,
`
`mirror Plaintiffs’ Aloxi® formulation). In addition to the memorandum opinion following the
`
`bench trial, Judge Cooper has also issued more than one hundred pages of opinions in two
`
`separate claim construction decisions, and presided over a summary judgment hearing in a
`
`related action involving one of the patents-in-suit. (D.I. 61, 92 (Civ. No. 12-2867); D.I. 290, 361
`
`(Civ. No. 11-3962).)
`
`Judge Cooper is also scheduled to preside over another trial involving the Aloxi® patents
`
`in the summer of 2016 (Ex. C, D.I. 110 (Civ. No. 12-2867)), and is currently overseeing four
`
`Hatch-Waxman actions filed in 2015 against five different defendant parties, including Plaintiffs’
`
`
`1
`One of the patents-in-suit, the ’094 patent, was not at issue in the 2011 New Jersey
`Action.
`
`2
`
`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 7 of 20 PageID #: 297
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`New Jersey action against Hospira (collectively, “the 2015 New Jersey actions”) (see infra, at
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`Table 1). While formal discovery has not yet begun in the Delaware action, Hospira and other
`
`similarly situated defendants have produced their respective ANDAs in the 2015 New Jersey
`
`actions. A joint scheduling conference for those actions is currently set for January 26, 2016.
`
`Following that conference, the parties will exchange infringement and invalidity contentions, and
`
`responses thereto, over the next few months, as required by the New Jersey Local Patent Rules.
`
`Helsinn now files this motion to stay this protective action to avoid duplicative
`
`proceedings in two courts, pending a decision on Hospira’s motion to dismiss for lack of
`
`personal jurisdiction in the New Jersey action.
`
`III.
`
`SUMMARY OF ARGUMENT
`
`1.
`
`The instant action is the only active case in the District of Delaware involving the
`
`Aloxi® patents.2 On the other hand, the District of New Jersey is currently overseeing seven
`
`actions involving the Aloxi® patents. Discovery in the New Jersey action is already progressing
`
`— and will progress regardless of Hospira’s motion to dismiss — and a stay of the second-filed
`
`Delaware action will avoid duplicative litigation in this forum.
`
`2.
`
`Hospira would not be prejudiced by a stay of the Delaware action pending the
`
`motion to dismiss in the New Jersey action. As noted above, discovery is progressing in the
`
`New Jersey action. Moreover, even if the District of New Jersey were to grant Hospira’s motion
`
`to dismiss, any discovery taken in the District of New Jersey could be transferred to this Court.
`
`3.
`
`In view of Judge Cooper’s extensive experience with the patents-in-suit and
`
`generic palonosetron products — particularly given that she will necessarily be presiding over
`
`2
`Two Delaware actions, Civil Action Nos. 15-865 and 15-918, involving the Aloxi®
`patents were dismissed because the first-filed cases are progressing in the District of New Jersey.
`Another Delaware action, Civil Action No. 15-265, has been settled. (See D.I. 29, (Civil No. 15-
`2078).) And Civil Action No. 14-1444 has been stayed. (D.I. 24 (Civ. No. 14-1444).)
`
`3
`
`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 8 of 20 PageID #: 298
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`seven actions involving the Aloxi® patents, including against Hospira — staying the Delaware
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`action would promote judicial efficiency and avoid the possibility of two courts issuing
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`conflicting decisions on the same set of patents.
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`Prior Litigation History Involving the Patents-in-Suit
`
`With the exception of the ’094 patent (which issued after the other patents-in-suit), the
`
`other patents-in-suit have previously been litigated to a final judgment in the District of New
`
`Jersey. After overseeing more than four years of litigation in the 2011 New Jersey Action, Judge
`
`Cooper presided over a 12-day bench trial on the issues of validity and infringement of the ’724,
`
`’725, ’424, and ’219 patents. The trial concluded in August 2015, and Judge Cooper issued a
`
`judgment on November 16, 2015, finding all of the asserted claims of the ’724, ’725, ’424, and
`
`’219 patents valid and infringed. (Ex. B, D.I. 361 (Civ. No. 11-3962).)3
`
`In the meantime, seven more actions were filed in the District of New Jersey involving
`
`the Aloxi® patents, including all of the patents asserted against Hospira in the Delaware action.
`
`The following table lists the actions actively pending (i.e., not stayed) before Judge Cooper:
`
`
`
`
`3
`In the 2011 New Jersey Action, Plaintiffs accused two ANDA products of infringement,
`a 0.25 mg/5 mL product and a 0.075 mg/1.5 mL product. The 0.25 mg/5 mL product was found
`to infringe all of the asserted patents. (Id.) The 0.075 mg/1.5 mL product was also found to
`infringe the ’724, ’725, and ’424 patents. (Id.) The Court held, however, that the
`0.075 mg/1.5 mL product did not infringe the asserted claims of the ’219 patent. (Id.)
`
`4
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 9 of 20 PageID #: 299
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`
`Table 1: New Jersey actions Involving the Aloxi® Patents
`
`Defendants
`
`Date Filed
`
`Case Number
`
`Asserted Patent(s)
`
`Dr. Reddy’s Labs., Ltd.
`and Dr. Reddy’s Labs.
`
`May 11, 2012
`
`Civ. No. 12-2867
`
`The ’724 patent
`
`Dr. Reddy’s Labs., Ltd.
`and Dr. Reddy’s Labs.
`
`July 7, 2014 (Dr.
`Reddy)
`
`Civ. No. 14-4274
`
`U.S. Patent
`No. 9,066,980 (“the
`’980 patent”) and
`the ’094 patent
`
`Teva Pharms. USA and
`Teva Pharma. Indus.,
`Ltd.
`
`Hospira, Inc. and
`Hospira Worldwide,
`Inc.
`
`Fresenius Kabi USA,
`LLC, Emcure Pharms.
`Ltd., and Emcure
`Pharms. USA
`
`Fresenius Kabi USA,
`LLC, Exela Pharma
`Sciences, LLC, Exela
`Pharmsci, Inc., and
`Exela Holdings, Inc.
`
`October 13, 2014
`
`Civ. No. 14-6341
`
`The ’094 patent
`
`March 23, 2015
`
`Civ. No. 15-2077
`
`The patents-in-suit
`
`September 22, 2015
`
`Civ. No. 15-7015
`
`The patents-in-suit
`
`October 8, 2015
`
`Civ. No. 15-7378
`
`U.S. Patent Nos.
`8,598,218 and
`8,518,981 and the
`’724 and ’980
`patents against
`Fresenius. U.S.
`Patent No.
`9,125,905 against
`Fresenius and the
`Exela defendants.
`
`U.S. Patent No.
`9,173,942 and the
`’724, ’094, ’980
`patents
`
`Qilu Pharm. Co., Ltd.
`and Qilu Pharma
`
`November 17, 2015
`
`Civ. No. 15-8132
`
`As shown in the above table, there is a significant overlap in the patents that have been
`
`asserted in the various actions pending before Judge Cooper and against Hospira in the Delaware
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`5
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 10 of 20 PageID #: 300
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`action. For example, in Civil Action No. 15-7015, there is a complete overlap in the asserted
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`Aloxi® patents. Moreover, Judge Cooper has scheduled Civil Action Nos. 12-2867 and 14-4274
`
`for trial in the summer of 2016. (Ex. C, D.I. 110 (Civ. No. 12-2867).) At issue in that trial will
`
`be, inter alia, the infringement of the ’724 and ’094 patents and the validity of the ’094 patent.
`
`(Id.) Both of these patents have also been asserted against Hospira in the Delaware and New
`
`Jersey actions.
`
`On the other hand, while patent infringement lawsuits concerning Plaintiffs’ Aloxi®
`
`product have been filed in this Court, the only pending action is currently stayed. (D.I. 24 (Civ.
`
`No. 14-1444).)
`
`B.
`
`Plaintiffs’ First-Filed Action Against Hospira in New Jersey
`
` Hospira sent a paragraph IV notice letter certifying against the
`
`patents-in-suit. On March 23, 2015, Plaintiffs filed a complaint against Hospira in the District of
`
`New Jersey, which was assigned to Judge Cooper and Magistrate Judge Douglas E. Arpert. (Ex.
`
`A, D.I. 1 (Civ. No. 15-2077).) Instead of filing an answer, Hospira filed a motion to dismiss
`
`Plaintiffs’ amended complaint for lack of personal jurisdiction.4 (D.I. 16 (Civ. No. 15-2077).)
`
`Plaintiffs’ response to Hospira’s motion to dismiss is due on December 14, 2015. (D.I. 31 (Civ.
`
`No. 15-2077).) Hospira’s reply is due on December 28, 2015. (Id.) Hospira’s motion will be
`
`decided on the papers without oral argument. (Ex. D, ECF Entry 11/23/15.)
`
`Plaintiffs are seeking to consolidate two other 2015 New Jersey actions pending in the
`
`District of New Jersey (Civil Action Nos. 15-7015 and 15-7378) with the New Jersey action filed
`
`against Hospira for at least discovery purposes. (Ex. E, D.I. 36 (Civ. No. 15-2077).) Judge
`
`
`4
`In response to Hospira’s first motion to dismiss, Plaintiffs filed an amended complaint
`adding Defendant Hospira Worldwide, Inc., a wholly-owned subsidiary of Hospira, on June 30,
`2015. (D.I. 22 (No. 12-2077); D.I. 35 (No. 12-2077).)
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`6
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 11 of 20 PageID #: 301
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`Arpert has issued identical orders in these respective actions requiring the submission of a Joint
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`Discovery Plan from the parties in those actions by January 19, 2016. (Ex. F, D.I. 43 (Civ. No.
`
`15-2077); Ex. G, D.I. 31 (Civ. No. 15-7015); Ex. H, D.I. 25 (Civ. No. 15-7378).) The parties,
`
`including Hospira, will appear jointly for the initial conference on January 26, 2016, to set a
`
`single pretrial schedule for these cases. (Ex F, D.I. 43 (Civ. No. 15-2077).)
`
`Plaintiffs have commenced discovery in the 2015 New Jersey actions, with Hospira and
`
`the other similarly situated defendants having produced their respective ANDAs. After the
`
`initial scheduling conference is held, the District of New Jersey’s local patent rules prescribe the
`
`following deadlines for submitting infringement and invalidity contentions and disclosures:
`
`Table 2: Projected New Jersey Discovery Schedule
`
`Required Disclosure
`
`Date of Disclosure
`
`1. Plaintiffs to disclose asserted claims
`
`1. Seven days after the scheduling conference
`(New Jersey L. Pat. R. 3.6(b).)
`
`2. Defendants to disclose noninfringement and
`invalidity contentions, and produce documents
`supporting noninfringement contentions, prior
`art, and claim charts supporting invalidity
`contentions
`
`3. Plaintiffs to disclose infringement
`contentions and response to invalidity
`contentions, and produce documents
`supporting infringement contentions
`
`2. 14 days after the scheduling conference
`(Id. at 3.6(c)-(f).)
`
`3. 45 days after the disclosure of Defendants’
`noninfringement and invalidity contentions
`(Id. at 3.6(g)-(i).)
`
`C.
`
`Plaintiffs’ Second-Filed Action Against Hospira in Delaware
`
`On March 25, 2015, after the New Jersey action was filed, Plaintiffs filed a protective
`
`action against Hospira in this Court. As set forth in their complaint, Plaintiffs filed the Delaware
`
`action solely as a precautionary measure to ensure preservation of the Hatch-Waxman statutory
`
`stay. (D.I. 1 at ¶ 54.) On June 8, 2015, Hospira filed its answer and counterclaims. Plaintiffs
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`7
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 12 of 20 PageID #: 302
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`answered those counterclaims on November 13, 2015, and reiterated their position that the
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`litigation should proceed only in the venue of the first-filed action, i.e., the District of New
`
`Jersey. (See D.I. 17 ¶¶ 7, 11-12 (explaining that Plaintiffs “do not consent to this suit moving
`
`forward in Delaware by virtue of filing a second protective Complaint in this district or filing this
`
`Reply to Hospira’s Counterclaims”).)
`
`Formal discovery has yet to begin in the Delaware action. Instead, the parties have
`
`jointly submitted a request to extend the filing date for the Joint Status Report and Proposed
`
`Scheduling Order from December 2, 2015 to January 15, 2016 (D.I. 18), which the Court granted
`
`on December 1, 2015. (Id.).
`
`Given the pendency of the same case in two different forums,
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`
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`V.
`
`ARGUMENT
`
`The Court should exercise its inherent power to stay this action and prevent duplicative
`
`litigation in two forums. In the District of New Jersey, Judge Arpert has already issued orders
`
`requiring the parties in three similarly situated actions, i.e., the 2015 New Jersey actions, to
`
`submit a Joint Discovery Plan, and appear together for a Rule 16 Conference on January 26,
`
`8
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`

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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 13 of 20 PageID #: 303
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`2016, to set single discovery schedule for those cases. Given this coordination of discovery that
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`is already underway — which will necessarily occur in New Jersey with respect to the patents-
`
`in-suit irrespective of whether or not Hospira’s motion to dismiss is granted — it would be
`
`inefficient to proceed with overlapping discovery in the District of Delaware for a single
`
`defendant (i.e., Hospira) pending a decision on that motion.
`
`A.
`
`A Stay Will Conserve the Resources of the Parties and the Court
`
`The power to stay an action “is firmly within the discretion of the court” and “incidental
`
`to the power inherent in every court to control the disposition of the cases on its docket with
`
`economy of time and effort for itself, for counsel, and for litigants.” First American Title Ins.
`
`Co. v. Maclaren, L.L.C., No. 10-363-GMS, 2012 U.S. Dist. LEXIS 31508, at *12-13 (D. Del.
`
`Mar. 9, 2012). To determine if a stay is appropriate, the court is guided by three factors:
`
`“(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-
`
`moving party; (2) whether a stay will simplify the issues in question and trial of the case; and
`
`(3) whether discovery is complete and whether a trial date has been set.” Bonutti Skeletal
`
`Innovations, L.L.C. v. Zimmer Holdings, Inc., Nos. 12-1107, 12-1109, 12-1110, 2014 U.S.
`
`Dist. LEXIS 47430, at *7 (D. Del. Apr. 7, 2014).
`
`(1)
`
`Hospira Will Not Be Prejudiced by a Stay
`Because Discovery Is Proceeding in the New Jersey Action
`
`Staying the Delaware action will not prejudice Hospira. Discovery in the New Jersey
`
`action, along with other 2015 New Jersey actions, is already progressing while Hospira’s motion
`
`to dismiss is being decided. In Pfizer Inc. v. Mylan Inc., even though Mylan had a motion to
`
`dismiss for lack of personal jurisdiction pending in the first-filed Delaware action (like Hospira
`
`does in the District of New Jersey), the Northern District of West Virginia stayed the second-
`
`filed protective action in its forum. No. 15-4, 2015 U.S. Dist. LEXIS 85889, at *4-5, 9-11 (N.D.
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`9
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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 14 of 20 PageID #: 304
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`W. Va. Apr. 24, 2015). The Court determined that Mylan would not be prejudiced by a
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`substantial delay because discovery in the first-filed Delaware action was progressing. Id. at *9-
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`10; see also Salix et al., v. Mylan, No. 14-152, at *9-11 (N.D. W. Va. Feb. 18, 2015) (staying the
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`second-filed protective action in the Northern District of West Virginia in favor of the first-filed
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`action in the District of Delaware, even though Mylan had again filed a motion to dismiss for
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`lack of personal jurisdiction in the District of Delaware) (Ex. K). Similarly, Hospira would not
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`be prejudiced by any substantial delay because discovery is progressing in New Jersey. (D.I. 36,
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`68, 74 (Cf. Boehringer Ingelheim Pharma GmbH v. Teva Pharms. USA, Inc., No. 14-7811
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`(MLC)(TJB) (moving forward with an initial scheduling conference and discovery despite a
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`pending motion to dismiss for lack of personal jurisdiction)).)
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`To date, no discovery has been taken in the Delaware action. As noted above, however,
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`Hospira has also already produced its ANDA in the New Jersey action, and the parties are
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`scheduled to serve various infringement and invalidity contentions and responses to those
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`contentions over the next few months. See supra, at Table 2. Moreover, even if the New Jersey
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`action were dismissed for lack of personal jurisdiction, “[a]ny discovery that occurred in that
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`case would presumably be equally applicable if the suit were to” be transferred to Delaware.5
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`See Novartis AG v. HEC Pharm Co., No. 15-1647, 2015 U.S. Dist. LEXIS 122391, at *10
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`(D.N.J. Sept. 14, 2015).
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`Hospira’s own actions demonstrate the lack of prejudice from a temporary stay.
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`Plaintiffs and the other New Jersey defendants initially agreed to schedule a Rule 16 Conference
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`5
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`10
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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 15 of 20 PageID #: 305
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`for the week of December 14, 2015. (Ex. E, D.I. 36 (Civ. No. 15-2077).) According to its
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`counsel in the New Jersey action, however, Hospira is unable to “negotiate any meaningful
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`scheduling order” in mid-December because “Hospira’s patent counsel is currently preparing for
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`a trial in the District of Delaware, which begins November 30 and is currently scheduled to last
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`for two weeks.” (Ex. L, D.I. 37 (Civ. No. 15-2077).) To accommodate Hospira’s schedule, the
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`date of the scheduling conference in the New Jersey action (as well as the other two ANDA
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`cases that are being scheduled together) was moved to January 26, 2016. (Ex. F, D.I. 43 (Civ.
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`No. 15-2077).) Similarly, in this case, the parties have jointly requested that the deadline for
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`filing the Joint Status Report and Proposed Scheduling Order in the Delaware action be moved
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`from December 2, 2015 to January 15, 2016. (D.I. 18.) Hospira cannot claim any prejudice
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`from a stay in this case while its motion to dismiss in New Jersey is being decided, especially
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`given that discovery will be proceeding in that forum in the meantime.
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`Simultaneous litigations would also deprive Plaintiffs of the benefits of coordinated
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`discovery with the other 2015 New Jersey actions proceeding on the same schedule. Plaintiffs
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`would be forced to negotiate two different protective orders with the same defendant, respond to
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`duplicative document requests, and produce the same witnesses multiple times in different
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`forums. In contrast, staying the Delaware action will provide Plaintiffs and Hospira coordinated
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`discovery in a single forum, and would prevent a squandering of judicial and party resources.
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`(2)
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`Staying This Case Would Promote Judicial Economy
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`Proceeding in this protective action would waste this Court’s limited judicial resources.
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`Simultaneous litigations in Delaware and New Jersey would require this Court to provide and
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`manage a case schedule, address any discovery disputes that may arise, and grapple with patent
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`issues that will be (and, indeed, have already been) decided by the District of New Jersey. Such
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`duplicative litigations risk the possibility of inconsistent rulings by two courts on the same set of
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`11
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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 16 of 20 PageID #: 306
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`patents. There is no reason for discovery to proceed in two forums at the same time with respect
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`to identical litigation issues. See Freedom Mortg. Corp. v. Irwin Fin. Corp., No. 08-146-GMS,
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`2009 U.S. Dist. LEXIS 24208, at *11 (D. Del. Mar. 23, 2009) (explaining that duplicative
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`litigation in different forums saves judicial resources and minimizes conflicting outcomes by
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`sister courts).
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`Given her extensive experience with the Aloxi® patents, and the seven actions pending in
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`her Court, Judge Cooper is “uniquely positioned to rule on . . . matters on a consolidated basis in
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`a manner that provides judicial efficiency and economies of scale for all parties.” See Zazzali v.
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`Wavetronix LLC, Nos. 12-1211-GMS, et al., 2014 U.S. Dist. LEXIS 135116, at *36 (D. Del.
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`Sept. 25, 2014). In Cisco Systems Inc. v. SynQor, Inc., this Court recognized that “it would be an
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`inefficient use of judicial resources not to have” a case before a judge who has, inter alia,
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`“entered a 58-page Markman Memorandum Opinion,” “decided eleven summary judgment
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`motions,” and “presided over a seven-day trial and a two-day permanent injunction hearing.”
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`No. 11-86, 2011 U.S. Dist. LEXIS 36355, at *2, 7 (D. Del. Apr. 1, 2011). As discussed earlier,
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`Judge Cooper has, inter alia:
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`1.
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`2.
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`3.
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`Since 2011, overseen litigation involving patents that have also been asserted in
`the instant action;
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`Presided over a 12-day bench trial against two other ANDA defendants and issued
`a permanent injunction and judgment on the infringement and validity of the ’724,
`’725, ’424, and ’219 patents, which have all been asserted in this case; and
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`Issued more than one hundred pages of opinions in two separate claim
`construction decisions and has presided over a summary judgment hearing in a
`related action involving one of the Aloxi® patents.
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`(See supra, at [].) For at least these reasons, continuing to proceed before Judge Cooper would
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`be an efficient use of judicial resources.
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`12
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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 17 of 20 PageID #: 307
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`Judicial economy would also be served by staying the Delaware action because, as noted
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`above, there are seven actions pending in the District of New Jersey before Judge Cooper
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`involving the same family of patents. (See supra, at II.B.) As this Court recognized in Smart
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`Audio Technologies, LLC v. Apple, Inc., the presence of related cases “is an important practical
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`consideration” because the commonalities between the “lawsuits may allow the court to develop
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`some familiarity with the patents and technology involved, thereby conserving judicial time and
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`resources.” 910 F. Supp. 2d 718, 733 & n.15 (D. Del. 2012). Allowing all seven “cases to
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`proceed before one court will lessen the costs to the judicial system as a whole.” See id.
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`Plaintiffs are currently in the process of seeking consolidation of the New Jersey action
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`against Hospira with two other similarly-situated New Jersey actions filed this year, i.e., the 2015
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`New Jersey actions. (See Ex. E, D.I. 36 (Civ. No. 15-2077).) Indeed, in Civil Action No. 15-
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`7015, Plaintiffs have asserted the same set of patents as the Delaware and New Jersey actions.
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`(See supra, at Table 1.) Following Plaintiffs’ request for consolidation, Judge Arpert issued
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`identical orders in all of the 2015 New Jersey actions for purposes of coordinating pretrial
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`scheduling. (Ex. F, D.I. 43 (Civ. No. 15-2077); Ex. G, D.I. 31 (Civ. No. 15-7015); Ex. H, D.I.
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`25 (Civ. No. 15-7378).) The benefits of a single, coordinated, New Jersey action eliminate any
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`need for duplicative litigation in this forum.6
`
`(3)
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`The Early Stage of Litigation Favors a Stay
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`Both the Delaware and New Jersey actions are in their early stages. As discussed above,
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`however, Hospira’s ANDA was produced in the New Jersey action and, following the scheduling
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`conference, the parties will soon be exchanging infringement and invalidity contentions and
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`6 Other actions filed in the District of Delaware involving the Aloxi® patents have either been
`stayed or dismissed. (See D.I. 7 (Civ. No. 15-918) (action against Fresenius Kabi USA, LLC
`dismissed); D.I. 14 (Civ. No. 15-265) (action against Par Pharmaceutical Co. dismissed); D.I. 23
`(Civ. No. 14-1444) (action against Exela Pharma Sciences LLC stayed).)
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`13
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`Case 1:15-cv-00264-GMS Document 22 Filed 12/14/15 Page 18 of 20 PageID #: 308
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`responses to those contentions. In Delaware, there has been no scheduling conference, no trial
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`date set, and no discovery. Since neither the parties nor the Delaware Court has “expended
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`s