Case 2:20-cv-00337-JRG Document 33 Filed 01/07/21 Page 1 of 21 PageID #: 206
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SEAGEN INC.,
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`Plaintiff,
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`v.
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`DAIICHI SANKYO CO., LTD.,
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`Defendant.
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`CASE NO. 2:20-cv-00337-JRG
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`JURY TRIAL DEMANDED
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`DEFENDANT’S MOTION TO TRANSFER UNDER
`28 U.S.C. § 1404 TO THE DISTRICT OF DELAWARE
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`Case 2:20-cv-00337-JRG Document 33 Filed 01/07/21 Page 2 of 21 PageID #: 207
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`
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION………………………………………………………………………………..1
`BACKGROUND.................................................................................................................... 2
`LEGAL STANDARD ............................................................................................................ 6
`ARGUMENT ......................................................................................................................... 7
`I.
`THE PRIVATE INTEREST FACTORS HEAVILY FAVOR TRANSFER........ 8
`A.
`Transfer Would Avoid Duplicative Litigation and Preserve Judicial
`Economy .............................................................................................. 8
`The District of Delaware Is the Most Convenient for the Witnesses ........ 9
`B.
`The Availability of Compulsory Process Favors Transfer ......................11
`C.
`Easier Access to Sources of Proof Heavily Favors Delaware .................12
`D.
`No Practical Problems Should Arise If This Case Is Transferred............13
`E.
`PUBLIC INTEREST FACTORS FAVOR TRANSFER ...................................14
`A.
`The District of Delaware Has a Strong Interest in This Case ..................14
`B.
`The Remaining Public Interest Factors Are Neutral...............................15
`CONCLUSION..........................................................................................................15
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`II.
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`i
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`
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`Adaptix, Inc. v. HTC Corp.,
`937 F. Supp. 2d 867 (E.D. Tex. 2013)................................................................................ 12
`
`Arca-Pineda v. Att’y Gen.,
`527 F.3d 101 (3d Cir. 2008) ................................................................................................4
`
`Cont’l Grain Co. v. The Barge FBL-585,
`364 U.S. 19 (1960)..............................................................................................................9
`
`Daimler AG v. Bauman,
`571 U.S. 117 (2014)............................................................................................................2
`
`Fujitsu Ltd. v. Tellabs, Inc.,
`639 F. Supp. 2d 761 (E.D. Tex. 2009).............................................................................. 8–9
`
`In re Genentech Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ............................................................................... 6, 10, 12
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ......................................................................................... 14
`
`Micron Tech., Inc. v. Mosaid Tech., Inc.,
`518 F.3d 897 (Fed. Cir. 2008) .............................................................................................8
`
`In re Nintendo Co., Ltd.,
`589 F.3d 1194 (Fed. Cir. 2009) ................................................................................. 6–7, 15
`
`On Semiconductor Corp. v. Hynix Semiconductor, Inc.,
`No. 09-cv-390, 2010 WL 3855520 (E.D. Tex. Sept. 30, 2010)............................................ 12
`
`Realtime Data LLC v. Teradata Operations, Inc.,
`Nos. 15-cv-463, 15-cv-470-RWS-JDL, 2016 WL 235183 (E.D. Tex. Jan. 20,
`2016)................................................................................................................................ 10
`
`Smartflash LLC v. Google, Inc.,
`No. 14-cv-435-JRG-KNM, 2015 WL 13840411 (E.D. Tex. Apr. 6, 2015).............................9
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S.Ct. 1514 (2017) .........................................................................................................2
`
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014) ..................................................................................... 6, 10
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`ii
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`
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`TransUnion Intelligence LLC v. Search Am., Inc.,
`No. 10-cv-130-TJW, 2011 WL 1327038 (E.D. Tex. Apr. 5, 2011) ...................................... 13
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) ..................................................................................... 7, 15
`
`In re Verizon Bus. Network Servs. Inc.,
`635 F.3d 559 (Fed. Cir. 2011) ........................................................................................... 10
`
`In re Volkswagen AG (“Volkswagen I”),
`371 F.3d 201 (5th Cir. 2004) ............................................................................................. 10
`
`In re Volkswagen of Am., Inc. (“Volkswagen II”),
`545 F.3d 304 (5th Cir. 2008) ................................................................................6–7, 11, 15
`
`Wireless Recognition Tech. LLC v. A9.com, Inc.,
`Nos. 10-cv-364-JGR, 10-cv-365-JRG, 10-cv-577-JRG, 10-cv-578-JRG, 2012
`WL 506669 (E.D. Tex. Feb. 15, 2012) ............................................................................... 14
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`Statutes
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`28 U.S.C. § 1404(a) ......................................................................................................... passim
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`Other Authorities
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`U.S. Patent No. 10,808,039 .............................................................................................. passim
`
`Fed. R. Civ. P. 45(c)(1)(A)...................................................................................................... 12
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`Fed. R. Civ. P. 45(c)(1)(B)(ii) ................................................................................................. 12
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`iii
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`INTRODUCTION
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`Daiichi Sankyo Company, Limited (“Daiichi Sankyo Japan”), respectfully moves to
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`transfer this patent infringement action to the District of Delaware pursuant to 28 U.S.C. § 1404(a).
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`Plaintiff Seagen Inc. (“SGI”) alleges that Daiichi Sankyo Japan—through “subsidiaries and
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`contractual business partners”—infringes SGI’s U.S. Patent No. 10,808,039 (the “ʼ039 Patent”).
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`Yet, SGI has named none of these subsidiaries or contractual business partners as parties to this
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`lawsuit, specifically: (a) Daiichi Sankyo, Inc. (“Daiichi Sankyo US”) and (b) AstraZeneca
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`Pharmaceuticals LP (“AstraZeneca US”). Daiichi Sankyo US and AstraZeneca US are collectively
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`responsible for the sale and marketing of the accused product, DS-8201 or Enhertu®, in the United
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`States. The reason for SGI’s omission of these important parties is clear: venue would be improper
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`in this District as to them. SGI could have brought an action in the District of Delaware as SGI
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`and non-parties Daiichi Sankyo US and AstraZeneca US were each formed under the laws of
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`Delaware. Instead, SGI filed in this District, where (i) there is no material connection to the dispute
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`at issue; (ii) there are no potential witnesses or likely relevant documents; (iii) none of the supposed
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`infringers, named or unnamed, reside; and (iv) SGI itself is not incorporated nor has its principal
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`place of business.
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`This action should proceed in Delaware because it is a more convenient forum for the
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`attendance of witnesses necessary to decide the dispute and the presentation of necessary evidence.
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`The District of Delaware also has a pending declaratory judgment lawsuit that relates to the alleged
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`infringement of the ’039 Patent at issue here—and, most critically, includes the parties missing
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`from the current lawsuit, Daiichi Sankyo US and AstraZeneca US. (See Case No. 20-cv-01524-
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`LPS (D. Del. Nov. 13, 2020).) Thus, proceeding in the District of Delaware, the district where
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`venue is appropriate for Daiichi Sankyo US and AstraZeneca US, allows both Daiichi Sankyo US
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`and AstraZeneca US to be parties to the litigation, as opposed to non-parties who are beyond the
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`subpoena power of this Court. Further, judicial efficiency strongly weighs in favor of transferring
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`this action to the District of Delaware, avoiding the possibility of conflicting claim construction
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`decisions, duplicative discovery, and unnecessary expenditure of resources. In addition, transfer
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`would not inconvenience SGI. SGI is “at home” in the District of Delaware because it chose to be
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`incorporated there.1 By contrast, SGI has no discernable connection to this District. As explained
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`in detail below, the factors relevant to the motions-to-transfer analysis weigh heavily in favor of
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`transfer to the District of Delaware.
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`BACKGROUND
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`This patent infringement action involves the marketing of Daiichi Sankyo Japan’s product
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`Enhertu®, a revolutionary and life-saving breast cancer treatment discovered by Daiichi Sankyo
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`Japan scientists. This action, however, is not the first litigation between SGI and Daiichi Sankyo
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`Japan, as SGI has been on a campaign since 2019 to try to usurp Daiichi Sankyo Japan’s patent
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`rights to Enhertu®. In fact, this action is the third of four separate actions. The first, filed by
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`Daiichi Sankyo Japan in the District of Delaware last year, involved disputes over patent rights to
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`Enhertu®. (Case No. 19-02087-CFC (D. Del. Nov. 4, 2019) (hereinafter, “First Delaware
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`Action”).) That action has been stayed in favor of a second action—an arbitration that is currently
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`ongoing. (Case No. 01-19-0004-0115 (hereinafter, “Arbitration”).) The third action is this current
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`lawsuit inexplicably brought by SGI in Texas where neither Party has any meaningful connection,
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`where no relevant witnesses are located, and where neither the asserted patent nor the accused
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`technology was developed. In addition, in November 2020, AstraZeneca US, Daiichi Sankyo US,
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`1 Daimler AG v. Bauman, 571 U.S. 117, 137 (2014); TC Heartland LLC v. Kraft Foods Grp.
`Brands LLC, 137 S.Ct. 1514, 1521 (2017) (explaining that for purposes of venue, a corporation is
`considered to be a resident of the state in which it is incorporated).
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`and Daiichi Sankyo Japan filed a lawsuit against SGI in the District of Delaware for a declaration
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`that their respective conduct does not infringe the ʼ039 Patent. (See Case No. 20-cv-01524-LPS
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`(D. Del. Nov. 13, 2020) (hereinafter, “Second Delaware Action”).) That lawsuit remains pending.
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`A.
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`Daiichi Sankyo Japan’s Past Collaboration with SGI and Related Disputes
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`Over the past quarter of a century, Daiichi Sankyo Japan has devoted significant resources
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`to developing technology for chemotherapy drug delivery, including a class of drugs known as
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`antibody drug conjugates (“ADCs”). In addition to conducting its own research relating to ADCs,
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`Daiichi Sankyo Japan entered into a 2008 research collaboration agreement with SGI (the
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`“Agreement”). No part of that collaboration occurred in Texas and it did not result in the discovery
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`of any viable clinical drug candidate. (Ratliff Decl. ISO Mot. Transfer ¶1, Exh. 1.) 2 In 2015,
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`Daiichi Sankyo Japan terminated the Agreement and continued with its own independent ADC
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`research, which led to the discovery of Enhertu®.
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`After Daiichi Sankyo Japan announced a $6.9 billion plus collaboration with AstraZeneca
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`US’s parent company concerning Enhertu®, (id. ¶2, Exh. 2), SGI filed an application for issuance
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`of the ʼ039 Patent on July 10, 2019 as U.S. Patent Application No. 16/507,839.3 On August 19,
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`2019, one month after SGI filed its application for issuance of the ʼ039 Patent and four years after
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`termination of the Agreement, SGI sent a notice of dispute to Daiichi Sankyo Japan, pursuant to
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`the Agreement, claiming that the Agreement required Daiichi Sankyo Japan to assign its Enhertu®
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`2 “Decl.” refers to the Declarations of Preston K. Ratliff II, Hiroaki Miki of Daiichi Sankyo Japan,
`Daniel Switzer of Daiichi Sankyo US, Kevin Smith of Daiichi Sankyo US, and Albert Bucci of
`AstraZeneca US, which are submitted with this motion. “Exh.” refers to the exhibits attached to
`the January 5, 2021 Declaration of Preston K. Ratliff II submitted in support of Defendant’s
`Motion to Transfer.
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` Daiichi Sankyo US submitted a Biologics License Application (“BLA”) for Enhertu® to the
`United States Food and Drug Administration (“FDA”), which was granted, with accelerated
`approval, in December 2019.
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` 3
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`patent rights to SGI. As a result of this dispute, Daiichi Sankyo Japan brought a suit for declaratory
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`judgment in the District of Delaware on November 4, 2019 in the First Delaware Action. SGI then
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`initiated the Arbitration eight days later. On November 13, 2020, the First Delaware Action was
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`administratively closed pending the ongoing Arbitration.4 (Case No. 19-02087-CFC, D.I. 44.)
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`SGI’s claims in the ʼ039 Patent are a dramatic and unsupported expansion from the
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`applications to which it claims priority, and thus, are invalid. Daiichi Sankyo US and AstraZeneca
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`US filed a Petition for Post-Grant Review of the ʼ039 Patent on December 23, 2020, which
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`challenges the asserted claims of the ʼ039 Patent claims based, in part, on lack of written
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`description and lack of enablement.
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`B.
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`The Current Dispute
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`In its Complaint, SGI identifies Enhertu® as the accused product. (D.I. 1, Compl. ¶4.) SGI,
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`however, named only Daiichi Sankyo Japan as the defendant even though Daiichi Sankyo Japan
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`is not authorized to sell Enhertu® in the United States. (Miki Decl. ¶4.) SGI is not incorporated
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`in Texas, is not headquartered in Texas, and does not appear to have any material connection to
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`Texas. (D.I. 1, Compl. ¶6.) Similarly, Daiichi Sankyo Japan has no material connection to Texas;
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`it is a Japanese corporation with a principal place of business in Tokyo, Japan, and does not have
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`any facilities or employees within the state of Texas. (Miki Decl. ¶¶2, 7.) Further, Daiichi Sankyo
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`Japan is not aware of any potential trial witnesses who reside in this District. (Id. ¶7.)
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`SGI’s Complaint alleges that “DSC’s subsidiaries and contractual business partners”
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`committed acts of infringement.
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` (See D.I. 1, Compl. ¶11.) Although SGI’s Complaint
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`conspicuously does not name those entities, it is Daiichi Sankyo US and AstraZeneca US that co-
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`4 “Administrative closure” is a docket management tool utilized by courts in the Third Circuit. The
`case remains active, and therefore may be reopened at any point. See Arca-Pineda v. Att’y Gen.,
`527 F.3d 101, 103, 105 (3d Cir. 2008).
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`market Enhe11u® in the United States. Daiichi Sankyo US is a Delaware corporation with
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`headqualters in Basking Ridge, New Jersey.
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`(Switzer Decl 1l2.) AstraZeneca US is a Delaware
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`unwed paw-ship headmanered in Delaware—
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`As the BLA holder for Enhe11u®fi Daiichi Sankyo US is the only company licensed by the
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`FDA to introduce or deliver for introduction into interstate commerce Enhertu®.
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`(Switzer Dec].
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`1B.) Daiichi Sankyo US has responsrbility for the_ sale of Enhertu® in the United
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`ad.)—
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`— Daiichi same us
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`then sells packaged Enhertu® to specialty distributors and pharmacies, who in turn sell Enhertu®
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`to customers in the United States.
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`(Switzer Decl 113; Smith Decl 1l4.) AstraZeneca US works
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`with Daiichi Sankyo US to market Enhertu® in the United States,—
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`Although SGI’s Complaint names Daiichi Sankyo Japan as the sole defendant, litigation to
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`defend against SGI allegations of infiingement of the ’039 Patent necessarily will involve Daiichi
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`Sankyo US and AstraZeneca US, both of whom are squarely implicated in SGI’s Complaint. For
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`instance, SGI alleges that “[o]n January 6, 2020, DSC [Daiichi Sankyo Japan] announced
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`DS-8201’s availability in the United States, noting that DSC [Daiichi Sankyo Japan] would be
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`solely responsible for manufacturing and supply.” (D.I. 1, Compl. ¶4.) The U.S. package insert
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`for Enhertu®, however, correctly identifies Daiichi Sankyo US—not Daiichi Sankyo Japan—as
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`the manufacturer for the final, packaged Enhertu® drug product and correctly lists Daiichi Sankyo
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`US and AstraZeneca US as the only entities authorized to market Enhertu®. (Smith Decl. ¶3.)
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`SGI’s Complaint also calls out Daiichi Sankyo US’s and AstraZeneca US’s actions through its
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`allegations of the “promot[ion] and encourage[ment of] the use of the infringing products,
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`including DS-8201” of Enhertu®. (D.I. 1 Compl. ¶25.) This action therefore affects Daiichi
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`Sankyo US and AstraZeneca US’s substantial interests in commercializing and marketing
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`Enhertu® in the United States. (Id. ¶¶4, 25).
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`On November 13, 2020, to ensure that Daiichi Sankyo US’s and AstraZeneca US’s legal
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`rights regarding their commercialization of Enhertu®, and rights with respect to future products
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`were protected, AstraZeneca US and Daiichi Sankyo US, along with Daiichi Sankyo Japan filed
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`the Second Delaware Action in Delaware alleging non-infringement of the ʼ039 Patent.
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`LEGAL STANDARD
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`A case should be transferred to another district if it could have been brought in that district
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`and would be “clearly more convenient” to resolve in that district. In re Genentech, Inc., 566 F.3d
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`1338, 1342 (Fed. Cir. 2009) (citing In re Volkswagen of Am., Inc. (“Volkswagen II”), 545 F.3d
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`304, 315 (5th Cir. 2008) (en banc)). The party seeking transfer need not show, however, that the
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`transferee forum is “far more convenient.” In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed.
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`Cir. 2014) (emphasis in original) (applying Fifth Circuit law); see also In re Nintendo Co., Ltd.,
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`589 F.3d 1194, 1198 (Fed. Cir. 2009) (applying Fifth Circuit law). Governing Fifth Circuit law
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`“forbids treating the plaintiff’s choice of venue as a factor in the analysis of a request to transfer
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`for the convenience of the parties.” Nintendo, 589 F.3d at 1200; see also Volkswagen II, 545 F.3d
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`at 314–15 (recognizing that the “burden that a moving party must meet to justify a venue transfer
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`[pursuant to § 1404(a)] is less demanding” than that required for forum non conveniens dismissal).
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`Whether another district is sufficiently more convenient is determined by analyzing
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`“private” and “public” interest factors. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir.
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`2008) (applying Fifth Circuit law). The private interest factors are: “(1) the relative ease of access
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`to sources of proof; (2) the availability of compulsory process to secure the attendance of
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`witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that
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`make a trial easy, expeditious and inexpensive.” Id. The public interest factors are: “(1) the
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`administrative difficulties flowing from court congestion; (2) the local interest in having localized
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`interests decided at home; (3) the familiarity of the forum with the law that will govern the case;
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`and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign
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`law.” Id. (quoting Volkswagen II, 545 F.3d at 315).
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`ARGUMENT
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`This action could have, and should have, been brought in the District of Delaware.
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`Delaware is where SGI is incorporated and where the Parties already have been involved in two
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`lawsuits relating to Enhertu® (the First Delaware Action and the pending Second Delaware
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`Action). It is also the forum in which the case could progress with Daiichi Sankyo US and
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`AstraZeneca US, each of which is implicated in the Complaint’s allegations, and each of which is
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`critical to the resolution of a dispute involving the alleged infringement of the ʼ039 Patent. In
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`addition, the overwhelming majority of material witnesses and sources of proof from Daiichi
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`Sankyo US and AstraZeneca US are in or near Delaware, whereas no known material witnesses or
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`material sources of proof are located in this District. Accordingly, proceeding in the District of
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`Delaware is demonstrably more convenient.
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`I.
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`A.
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`THE PRIVATE INTEREST FACTORS HEAVILY FAVOR TRANSFER
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`Transfer Would Avoid Duplicative Litigation and Preserve Judicial Economy
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`The Second Delaware Action that is currently pending involves the same ʼ039 Patent. Most
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`importantly, it involves all the critical parties necessary to the resolution of the issues in this
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`lawsuit, because unlike this action, it includes Daiichi Sankyo US and AstraZeneca US. (See Case
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`No. 20-cv-01524-LPS (D. Del. Nov. 13, 2020.) Daiichi Sankyo US and AstraZeneca US are key
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`parties to, and materially interested in, the current dispute, as these are the parties responsible for
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`the distribution, commercialization, marketing, and sale of Enhertu® within the U.S. (See supra
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`Introduction.) Despite the critical connection of these two parties to the dispute at hand, SGI failed
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`to name Daiichi Sankyo US and AstraZeneca US as defendants. That decision is unsurprising, as
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`venue would have been improper as to those entities. Both Daiichi Sankyo US and AstraZeneca
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`US are Delaware entities with headquarters in New Jersey and Delaware, respectively, and neither
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`has a regularly established place of business in this District. (Switzer Decl. ¶¶2, 7; Bucci Decl.
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`¶4); Micron Tech., Inc. v. Mosaid Tech., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008) (recognizing that
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`transfer analysis pursuant to 28 U.S.C. § 1404(a) requires consideration of “the absence of
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`jurisdiction over all necessary or desirable parties”). Daiichi Sankyo US and AstraZeneca US
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`indisputably possess relevant documents and employ individuals who likely should be witnesses
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`at any trial in this matter. Yet, as it stands, this suit will proceed with those entities as third parties
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`with employees who are outside of the subpoena power of this Court.
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`Transferring this matter to the District of Delaware also would allow consolidation (or
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`coordination) with the Second Delaware Action to avoid inconsistent rulings affecting the ʼ039
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`Patent. See Fujitsu Ltd. v. Tellabs, Inc., 639 F. Supp. 2d 761, 768, 779–80 (E.D. Tex. 2009)
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`(transferring the Eastern District of Texas case to the Northern District of Illinois where case
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`involving same patents and technology was pending, and recognizing that “considerations of
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`judicial economy would be best served” by the transfer). In situations where multiple cases
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`involving significant factual overlap are pending simultaneously, the courts of this District have
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`recognized that the preservation of judicial economy and avoidance of duplicative litigation are
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`paramount when analyzing a request to transfer a similar, related case outside of the district. For
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`example, in Smartflash LLC v. Google, Inc., another court of this District explained:
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`The existence of duplicative suits involving the same or similar issues may create
`practical difficulties that will weigh heavily in the transfer analysis. Further, the
`existence of multiple
`lawsuits involving
`the same issues is a paramount
`consideration when determining whether a transfer is in the interest of justice.
`
`No. 14-cv-435-JRG-KNM, 2015 WL 13840411, at *7 (E.D. Tex. Apr. 6, 2015) (internal quotation
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`marks and citations omitted); see also Cont’l Grain Co. v. The Barge FBL-585, 364 U.S. 19, 26
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`(1960) (“To permit a situation in which two cases involving precisely the same issues are
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`simultaneously pending in different District Courts leads to the wastefulness of time, energy and
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`money that §1404(a) was designed to prevent”). Applying Smartflash here, keeping the case in
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`this District would unnecessarily expend the judicial resources of two courts, while causing
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`“overlapping
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`issues” to be “simultaneously adjudicated in different districts.” 2015 WL
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`13840411, at *7.
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`Conversely, judicial economy will not be served by transferring the Second Delaware
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`Action to this District, or in the alternative, permitting SGI to amend the Complaint to join Daiichi
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`Sankyo US and AstraZeneca US to this suit. As explained above, this District is an improper
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`venue for both Daiichi Sankyo US and AstraZeneca US. Thus, transferring this lawsuit to the
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`District of Delaware is the only way to avoid a wasteful duplication of judicial resources.
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`B.
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`The District of Delaware Is the Most Convenient for the Witnesses
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`“The convenience of the witnesses is probably the single most important factor in transfer
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`analysis.” Genentecll. 566 F.3d at 1343 (intelnal quotation marks and citation omitted). The
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`District of Delaware is more convenient for the potential palty and non-party witnesses, and this
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`important factor thus weighs heavily in favor of transfer. In re Verizon Bus. Network Servs. Inc,
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`635 F.3d 559, 561 (Fed Cir. 2011). Under the Fifth Circuit’s 100-mile mle, “[w]hen the distance
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`between an ex'sting venue for trial of a matter and a proposed venue under § 1404(a) is more than
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`100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional
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`distance to be traveled.” In re Volkswagen AG (“Volkswagen I ”), 371 F.3d 201, 204—05 (5th Cir.
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`2004) (per curiam): see also Realtime Data LLC v. Teradata Operations, Ina, Nos. 15-cv-463,
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`l5—cv—470—RWS—JDL, 2016 WL 235183, at *5 (ED. Tex. Jan 20, 2016).
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`Daiichi Sankyo Japan is not aware of any party or non-party witnesses who reside or work
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`in this District. Toyota, 747 F.3d at 1340; (see also Miki Decl 11116—7.) With respect to party
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`witnesses, Daiichi Sankyo Japan does not have a presence in, or connection to, this District,
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`(ia'.
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`117), and it appears that neither does SGI. Thus, considering the palty witnesses who likely will be
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`called at trial. there are none that reside within this District.
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`(Id. 117.)
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`With respect to non—party witnesses, there are a substantial number of non-party witnesses
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`likely to be called to testify who reside and/or work in or near the District of Delaware.
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`Importantly,
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`there are non—palty witnesses who actually are party witnesses in the Second
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`Delaware Action (because Daiichi Sankyo US and AstraZeneca US are palties to that lawsuit).
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`For AstraZeneca
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`-10-
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`Case 2:20-cv-00337-JRG Document 33 Filed 01/07/21 Page 15 of 21 PageID #: 220
`Case 2:20-cv-OO337-JRG Document 33 Filed 01/07/21 Page 15 of 21 PageID #: 220
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`US, which is headquartered in Wilmington, Delaware,
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`ofthe key witnesses are either located within Delaware or, atleast, in a location significantly closer
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`to Delaware than to this District, and none of the likely party or non—party witnesses are located in
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`this District (or this State). Fintheimore, for SGI’s Seattle—based witnesses, both Districts an:
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`equally access1ble in tenns of travel time.
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`In Sim], this factor heavily favors transfer.
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`0
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`The Availability of Compulsory Process Favors Trans fer
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`A court may compel a non—palty witness to attend depositions or trial within 100 miles
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`5 Traveling to the Eastern Distn'ct of Texas will require nearly a full day for Daiichi Sankyo US
`and AstraZeneca US witnesses—a four-hour flight from the East Coast (Newark, New Jersey;
`Philadelphia, Pennsylvania; Baltimore, Marylanck or Dulles, Virginia) to Dallas, Texas, followed
`by a two-hour drive to Marshall, Texas. Conversely, Daiichi Sankyo US and AstraZeneca US
`witnesses can reach the District of Delaware by, at most, a one- to two-hour train ride.
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`-11-
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`

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`Case 2:20-cv-00337-JRG Document 33 Filed 01/07/21 Page 16 of 21 PageID #: 221
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`
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`from his or her residence. Fed. R. Civ. P. 45(c)(1)(A). “Transfer is favored when a transferee
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`district has absolute subpoena power over a greater number of non-party witnesses” than the
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`transferor district. Adaptix, Inc. v. HTC Corp., 937 F. Supp. 2d 867, 874 (E.D. Tex. 2013). “The
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`fact that the transferee venue is a venue with usable subpoena power . . . weighs in favor of transfer,
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`and not only slightly.” Genentech, 566 F.3d at 1345.
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`As discussed above, this District has no subpoena power over any of the expected
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`witnesses. Conversely, a number of non-party witnesses are located in Delaware, within a two to
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`three hours’ drive to Delaware, or the area where the District of Delaware has subpoena power—
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` (See supra Background § B, Argument
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`
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`§ I.B); Fed. R. Civ. P. 45(c)(1)(B)(ii). Accordingly, this factor favors transfer.
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`D.
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`Easier Access to Sources of Proof Heavily Favors Delaware
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`This factor “turn[s] upon which party . . . will most probably have the greater volume of
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`documents relevant to the litigation and their presumed location in relation to the transferee and
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`transferor venues.” On Semiconductor Corp. v. Hynix Semiconductor, Inc., No. 09-cv-390, 2010
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`WL 3855520, at *2 (E.D. Tex. Sept. 30, 2010).
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`As with the witnesses, Daiichi Sankyo Japan is unaware of any sources of evidence in this
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`District, and certainly none of a volume that would outweigh the potential evidence in or near
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`Delaware. Notably, SGI’s headquarters are in Bothell, Washington, and of its more than 1,900
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`U.S. based employees, over 1,350 employees are located in the greater Seattle area and over 75
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`employees are located in San Francisco, California. Similarly, Daiichi Sankyo Japan has no
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`operations in Texas, and thus no relevant documents in this State. (Miki Decl. ¶7.) Daiichi Sankyo
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`Japan thus has no reason to believe there are any relevant documents in Texas.
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`Conversely, a significant amount of the relevant evidence will come from Daiichi Sankyo
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`- 12 -
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`

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`Case 2:20-cv-00337-JRG Document 33 Filed 01/07/21 Page 17 of 21 PageID #: 222
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`
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`US and AstraZeneca US, and therefore from, or close to, the District of Delaware. (See supra
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`Background § B.)
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`The location of key documentary evidence regarding the inventorship and prosecution of
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`the ʼ039 Patent does not weigh in favor of retaining this case in this District. The ʼ039 Patent and
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`its file history are a matter of public record. In addition, given the principal location of SGI’s
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`facilities and employees, and the residence of the ʼ039 Patent named inventors, evidence related
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`to the conception and reduction to practice of the invention claimed in the ʼ039 Patent likely will
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`be located outside of this District.
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`In sum, the material evidence from Daiichi Sankyo US and AstraZeneca US is either
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`located within Delaware or in a location significantly closer to Delaware than to this District.
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`(Switzer Decl. ¶¶5–6; Smith Decl. ¶¶5–6; Bucci Decl. ¶11.) On the other hand, SGI’s evidence
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`regarding the asserted patent most likely is located predominately with the named inventors of the
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`‘039 Patent, who reside in the state of Washington and San Francisco, California, or at SGI’s
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`headquarters in Bothell, Washington—all of which are well outside of this District. On balance,
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`this factor heavily favors transfer to the District of Delaware.
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`E.
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`No Practical Problems Should Arise If This Case Is Transferred
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`There are no practical problems with transferring this case, because this case is in its
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`infancy. TransUnion Intelligence LLC v. Search Am., Inc., No. 10-cv-130-TJW, 2011 WL
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`1327038, at *5