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`Case 1:18—cv-00202-IMK Document 41 Filed 02/06/19 Page 1 of 10 PageID #: 1330
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`Case MDL No. 2884 Document 42 Filed 02i04I19 Page 1 of 10
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`BEFORE THE UNITED STATES JUDICIAL PANEL
`ON MULTIDISTRICT LITIGATION
`
`__
`_
`_
`In re Kerydin Patent LItIgatlon
`
`
`
`MDL No. 2384
`
`THE MYLAN DEFENDANTS’ RESPONSE TO
`
`ANACOR PHARMACEUTICALS, INC.’S
`MOTION TO TRANSFER TO DISTRICT OF DELAWARE
`
`"'ii
`
`..Jlli
`
`FEB 0 6 2019
`
`us. DISTRICT Coo
`RT—Wvuo
`LARKSBURG. Wv 253m
`/- MC V
`
`.520;
`
`Defendants Mylan Pharmaceuticals Inc. (“MP1") and Mylan Inc. (together, “the Mylan
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`Defendants") respectfully oppose Anacor Pharmaceuticals, Inc’s (“Anacor”) Motion to Transfer
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`Anacor Pharmaceuticals, Inc. v. Mylar: Pf:m-nmcenzicais, I’Itc. & Maia” Inc, Case No. 1:18—cv—
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`00202-IMK, pending in the United States District Court for the Northern District of West
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`Virginia, to Judge Richard G. Andrews in the United States District Cour-t for the District of
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`Delaware, for coordinated and consolidated pretrial proceedings pursuant to 28 U.S.C. § 140?
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`(“Motion to Transfer“). Anacor‘s motion is part ofa series of procedural maneuvers designed to
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`end-run around the fact that Delaware is an improper venue in which to litigate against the
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`Mylan Defendants.
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`When Anacor first considered potential forums in which to bring its Kerydin patent
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`claims, it knew that the District of Delaware recently held that venue was. improper in Delaware
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`as to MPl.' Nevertheless, Anacor set out to manufacture circumstances in an attempt to yank the
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`Mylan Defendants back into Delaware, even if only for pre—trial proceedings alone. First,
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`Anacor filed its Kerydin patent claims against thirteen other defendants in two lawsuits, both
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`filed in Delaware, and also filed a third and fourth lawsuit againstjust the Mylan Defendants in
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`Delaware and West Virginia, respectively. Second, Anacor moved to stay all four lawsuits,
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`l E.g., Bristol—Myers Squibb Co.. 8! (if.
`LPS(D.De1.).
`
`I-‘. MI'I’QII PirrtI'Intrceuticais Inc, 6? (13., CA. No'. 17-379
`
`

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`including both actions against the Mylan Defendants. Third, Anacor comes before the JPML
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`claiming that centralization is necessary to remedy the situation that Anacor itself created.
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`In view of these circumstances, Ancacor’s Motion to Transfer is not only manipulative, it
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`is also premature. Anacor seeks to transfer the above-referenced action from West Virginia to
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`Delaware, but Anacor already maintains an identical lawsuit against the Mylan Defendants in the
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`District of Delaware. Further, in the Delaware action against Mylan, motions for improper
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`venue, failure to state a claim, and a stay are currently pending. Resolution ofthose motions
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`could entirely moot Anacor’s Motion to Transfer. Regardless, centralization is inappropriate
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`because it would not produce the efficiencies that Anacor claims, and it would significantly
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`prejudice the Mylan Defendants by depriving them of the rights afforded under plain language of
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`28 U.S.C. § 1400(b). Thus, the Panel should deny Anacor‘s motion.
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`BACKGROUND
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`Anacor’s litigation strategy has created a complicated set of underlying circumstances,
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`including two district court actions against the Mylan Defendants, motions to stay both actions
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`filed by Anacor, and Rule 12 motions filed by the Mylan Defendants in the Delaware action.
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`The details are outlined herein.
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`in October 2018, Anacor filed four Hatch-Waxman actions conceming Kerydin, a topical
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`antifungal medication. Mem. in Supp. ofMot. to Transfer (“Mom") at l. The four actions
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`allege that fourteen defendants individually filed an Abbreviated New Drug Application
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`(“ANDA”) for generic tavaborole that infringes upon four ofAnacor’s patents (collectively. the
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`“patents-in-suit"). Two ofthose defendants, MP1 and FlatWing Pharmaceuticals, LLC, had
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`earlier petitioned for interpreter review of the patents~in~suit. Case Nos. IPR2018-01'358~61
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`(joined with Nos. IPR2018-00168-71]. Anacor sued four of the fourteen defendants in the
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`District of Delaware on October 17, 2018. See No. 1:18-cv~001606—RGA (D. Del.). On October
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`-2-
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`18, 2018, Chief Judge of the District Court for the District of Delaware, Leonard P. Stark, ruled
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`in another Hatch-Waxman patent infringement case that venue in Delaware is improper as to
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`MP1.2 One week later, Anacor sued another nine ofthe fourteen defendants in Delaware. See
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`No. 1:18~cv—0016?3~RGA (D. Del.) Then, on October 29, 2018, Anaeor sued the Mylan
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`Defendants in Delaware. No. 1:]8—cv—01699—RGA (D. Del). The District of Delaware
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`subsequently assigned all three of Anacor’s Delaware actions (the “Delaware Actions") to Judge
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`Richard G. Andrews (Mern. at 5). Thus, all defendants and all claims in Delaware are currently
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`before Judge Andrews, but the actions have not been consolidated, nor has Anaeor moved under
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`Rule 42 to consolidate them.
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`One day after it sued the two Mylan entities in Delaware, Anacor sued the same two
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`Myian entities in a mirror-image action in the Northern District of West Virginia. See No. 1:18-
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`ev-UO202-IMK (the “West Virginia Action"). As Anacor admits, it filed the duplicative West
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`Virginia action because the parties “dispute that venue is proper in the District of Delaware" and
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`“[b]ecause Mylan indicated that it would not object to venue" in the Northern District of West
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`Virginia. Mem. at2.
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`The Mylan Defendants moved to dismiss Anacor’s Delaware action under Rule 12(b)(3)
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`for improper venue and Rule 12(b)(6) for failure to state a claim upon which relief can be
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`granted. No. 1:18-cv-01699-RGA (D. Del.) ECF Nos. 1445. Were it not for Anacor’s strategic
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`decision to file a duplicative West Virginia lawsuit and use that to justify-its need to bring the
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`Mylan Defendants back into Delaware through its Inulti-district litigation request — despite the
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`District of Delaware‘s recent decision finding venue improper as to MP1 — the Panel would have
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`2 Bristol-Miter: Squibb C0.. 31 (if. v. Mylar: Pharmaceuticals Inc. 81:11., CA. No.
`(D. Del. Oct. 18, 2018).
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`l7—379—LPS
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`

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`nothing to consider, as all three Delaware actions are before Judge Andrews — including
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`Anacor’s action against the Myian Defendants. Instead, Anacor has manufactured a purported
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`need for the creation Ofa multi—district litigation by choosing to conduct its Kerydin litigation in
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`piecemeal fashion, and by suing the Mylan Defendants twice on the same facts in two different
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`districts. The Mylan Defendants filed a Motion to Dismiss for Improper Venue and Failure to
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`State a Claim in Delaware.
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`Further complicating the above circumstances, AnacOr has also filed motions to stay both
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`the Delaware and West Virginia actions against the Mylan Defendants. Thus, Anacorl’s litigation
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`strategy includes filing two mirror image complaints in different venues, requesting the Court in
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`each venue to stay the action, and ~— while its stay motions remain pending ~— requesting this
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`Panel to intervene and transfer one of the actions to the venue where the other mirror image
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`action is pending.
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`ARGUMENT
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`Contrary to Anacor’s contention that transfer of Hatch-Waxman litigation is effectively
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`rte I‘fgttem', Mem. at 6-7, “[c]entra1ization of any litigation — including patent cases — is not
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`automatic, and will necessarily depend on the facts, parties, procedural history and other
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`circumstances in a given litigation.” In re Bear Creek Techs, Inc. (‘72.?) Patent Ling, 858 F.
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`Supp.2d 1375, 13?“) (J.P.M.L. 2012}. Rather, as the party seeking transfer, Anacor bears the
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`burden of establishing that it is necessary and appropriate to transfer the West Virginia Action to
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`Delaware for pretrial proceedings.
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`In re Best Buy C0. Cat. Song-Bever-{v Credit Card-Act Ling,
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`804 F. Supp. 2d 13%. 13?“) {J.P.M.L. 20] l) (“the proponents of centralization” bear the “burden
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`of demonstrating the need for centralization"). To satisfy its burden, Anacor must demonstrate
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`that: (l) the Delaware Actions involve “common questions of fact” with the West Virginia
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`Action, and (2) the transferwili “promote thejust and efficient conduct" ofthe action for “the
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`-4-
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`convenience of the parties and witnesses.“ 28 U.S.C. § l40?(a). Failure to establish either
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`prerequisite mandates denial of the Motion to Transfer.
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`In this case, Anaeor cannot satisfy its
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`burden to show either factor.
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`I.
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`Anacor’s Motion ls Premature
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`What constitutes “common questions of fact" for the purpose of§ i40?(a) often requires
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`assessing far more thanjust what a plaintiffhas alleged. The Panel routinely looks beyond the
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`mere face ofthe complaints in question to determine whether the actions satisfy this first prong.
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`For example, the Panel has feund that a movant failed to show that common questions of fact
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`exist where, as here, “the litigation has not progressed to a point that the parties have determined
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`the specific nature of th[e] alleged infringement or to what extent infringement allegations will
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`be common to the defendants across these actions”; this is so even when “all actions allege that
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`defendants infringe the [same] patent.” In re Seiecr Retrieval, LLC. (”6} 7) Patent Ling, 883 F.
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`Supp. 2d 1353, 1354 (.I.P.M.L. 2012) (denying centralization).3
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`Anacor’s motion should be dismissed as premature. Notably, there are multiple pending
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`issues across the cases that should be resolved before any motion to transfer would be timely.
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`First, Anacor itself seeks “to stay all three of the Delaware actions .
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`.
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`. until the PTAB' enters a
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`final written decision .
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`.
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`. [and] through any appeal ofthe PTAB’s decision” in the inter-porter
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`review. Mem. at 2-3. Second, this motion is premature because the Mylan Defendants and
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`3 The Hateh-Waxman MDL consolidation cases that Anacor cites are inapposite. In most,
`the Panel was unmoved by non—movants’ concerns that pretrial consolidation would “engender
`delays in a litigation in which time is of the essence.“ In re Aifnzosr‘n fivdrochlorr'de Patent
`Litig, 560 F. Supp. 2d 1372, 1374 (J.P.M.L. 2008); In re Brimom'a’ine Patent Litig, 50? F. Supp.
`2d 1381, 1381—82 (J.P.M.L. 2007) (same); In re Dasioi'aran’ine Patent Ling, 502 F. Supp. 2d
`1354, 1355 (.i.P.M.L. 2003’) (same); In re Meroproio! Sticcr’nate Parent Ling, 329 F. Supp. 2d
`1368, 1330 (J.P.M.L. 2004) (same). However, the concern here is quite different: the motion to
`transfer is premature and transfer is improper for reasons unrelated to delay.
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`-5-
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`Anacor currently dispute whether venue is proper in Delaware. That motion should be resolved
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`before this Motion to Transfer is decided. Indeed, in the event that Anacor defeats the Mylan
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`Defendants’ Rule 12 motion to dismiss the Delaware action, there will be no need for a Panel
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`ruling on this motion, as the parties will already be litigating the exact same claims in the DistriCt
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`of Delaware.
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`At bottom, Anacor’s motion is an attempt to circumvent the statutory guarantees of28
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`U.S.C. § 1400(b).
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`in other words, Anacor seeks to employ the Panel to force the Mylan
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`Defendants to the District of Delaware even though that Court may determine that it would be
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`improper in view of§ 1400(b). Thus, Anacor’s Motion to Transfer is both premature and
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`inappropriate. Accordingly, the Motion to Transfer should be denied.
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`Moreover, although Anacor’s cross~motions to stay the three Delaware Actions4 attempt
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`to manufacture common procedural timing among, on the one hand, the actions that involve inter
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`partes movants and, on the other hand, those that do not, those motions are still pending—again
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`rendering this motion premature. See In re CVS Cranmer-It Wage & Hour Emplqv. Pine. Ling,
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`684 F.Supp.2d 137?, 1379 (J.P.M.L. 2010) (“The presence ofproeedural disparities among
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`constituent cases is another factor that can weigh against centralization. Here, the constituent
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`actions present quite different procedural postures"). Regardless, Anacor created its own
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`procedural morass, and its gamesmanship should not be condoned.
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`Furthermore, Anacor admits that there have been no claim construction proceedings yet
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`in any ofthe Kerydin actions. Mem. at 5. As Select Retrieval notes, when a movant has “shown
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`no evidence of claims construction terms,“ 83 F. Supp. 2d at 1354, transfer for multi-district
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`4 No. 1:18~cv-001606-RGA (D. Del.) ECF No. 34; No. 1:18-cv-0016T3-RGA (D. Del.) ECF No.
`46; No. 1:18-cv-01699-RGA (D. Del.) ECF No. 12.
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`.6V
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`litigation is premature. Second, the fact that just two ofthe 14 defendants (MP1 and FlatWing
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`Pharmaceuticals) petitioned for inter‘pm‘fes review reinforces that it has not “been determined at
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`this stage ofthe litigation whether defendants will assert common invalidity arguments.” 1d.
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`11.
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`Anacor’s Litigation Tactics Harm Efficiency and Convenience and Increase the
`Likelihood of Inconsistent Rulings
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`Anacor also fails to show that centralization will “promote the just and efficient conduct"
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`for “the convenience of the parties and witnesses." 28 U.S.C. § 1407(a). Although it asserts that
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`transferring the West Virginia Action to Delaware will “ensure .
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`.
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`. common fact and expert
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`discovery,“ Mem. at 5, it is likely that only discovery ofAnacor will be common among all the
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`actions.
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`infringement claims require defendant-specific discovery, and that discovery will not be
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`relevant across all ofthe actions. Thus, while it would be efficient for the parties to coordinate
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`discovery of Anacor — which can be accomplished in the absence of main-district litigation ~
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`weighing down each action in a multi-district litigation with irrelevant discovery of each
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`defendant would not be efficient. The JPML has previously recognized the benefits ofliniited
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`informal coordination of discovery where centralization was inappropriate. In re Eff Lilly & Co.
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`(Cephalerin Monohydr'ntel Patent Ling, 446 F. Supp. 242, 243 (J.P.M.L. 1978) (“For example,
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`notices for a particular deposition could be filed in all actions .
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`.
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`.
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`; the parties could seek to agree
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`upon a stipulation that any discovery relevant to more than one action may be used in all those
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`actions; and any party could seek orders from the [other] court[] directing the parties to
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`coordinate their pretrial efforts"). This is true even when there are far more actions in question.
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`See in re Plastic hijeci. Molding Mfg. Process (184) Potent Litig, T06 F. Suppld 13%, 1377
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`(J.P.M.L. 2010) (“The presiding Southern District of Californiajudge is already coordinating
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`proceedings in the 2? actions before him. .
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`.
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`. The remaining Northern District of California
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`action is likely susceptible to informal coordination by the involved parties and courts as well").
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`-7-
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`

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`Here, the parties are represented by sophisticated and experienced counsel that could effectively
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`coordinate limited discovery relevant across the actions with minimal burden and outside ofa
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`formal multi-district litigation framework _ something that already frequently and typically
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`occurs in Hatch-Waxman actions.
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`'
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`Moreover, there is no basis to assume that centralization of the actions will result in
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`“eliminat[ion] [ofl the possibility ofinconsistent pretrial rulings." In re £351,111,ch Co.
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`(Cephaiexin Monohydrate) Patent Litig, 446 F. Supp. 242, 243 (J.P.M.L. l9?8); see also Mem.
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`at 6. To the extent that either of thejudges engage in claim construction or decide any other
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`patent—related issue that applies to both cases, the parties can use the rulings in one case to ensure
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`consistency and appropriate rulings in the other case. And, infringement will be decided on a
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`defendant-by-defendant basis, which lowers the risk of inconsistent rulings.
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`In fact, Anacor’s motion itselfhas unnecessarily created a risk of inconsistent rulings
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`concerning the appropriatejurisdiction in which to litigate against the Mylan Defendants because
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`of the tension between this motion and the Mylan Defendants’ motion to dismiss the Delaware
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`Action under Rule 12(b')(3). The District of Delaware has already ruled venue is improper as to
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`MP1 in Delaware because, among other reasons, MP1 does not have “a regular and established
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`place of business” in Delaware. 28 U.S.C. § 1400(b). Simultaneously, by virtue of Anacor‘s
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`Motion to Transfer, the Panel must now address whether pretrial proceedings in Delaware “will
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`be for the convenience of parties and witnesses and will promote the just and efficient conduct of
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`such actions." 28 U.S.C. § 1407(a). There is inherent tension between these questions: How
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`can a particular district be convenient for a defendant when venue has been found to be improper
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`as to that defendant? While physical presence may be an indicator of convenience, physical
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`presence itself is an issue that is currently before the District of Delaware. Accordingly, that
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`Anacor introduced a risk ofinconsistent conclusions between the District of Delaware and the
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`Panel on this issue further underscores the prematurity of Anacor’s Motion to Transfer.
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`111.
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`There Is Little Need for Transfer When There Are Only Effectively Two Actions in
`Question
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`“[W]here only a minimal number of actions are involved, the moving party generally
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`bears a heavier burden of demonstrating the need for centralization." In re Patriot Not 'I, Inc,
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`See. Ling, No. MDL 2870, 2018 WL 6437899, at *1 (J.P.M.L. Dec. 6, 2018) (quoting In re.-
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`Trnnsocean Ltd. See. Litig. (No. II), ”I53 F.Supp.2d 1373, 1374 (J.P.M.L. 2010)); see also In re
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`JttmpSport, Inc, ('845 & '20?) Patent Ling, 338 F.Supp.3d 1356, 135? (J.P.M.L. 2018)
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`(denying centralization where four patent actions in one district and two in another district were
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`deemed “a minimal number of actions”); In re Quest Integrity USA, LLC. (”874) Potent Litig,
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`148 F.Supp.3d 1356, 1357 (J.P.M.L. 2015) (applying same reasoning for denying centralization
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`for two patent actions in the District of Delaware and one in another district). Since the
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`Delaware actions have already been assigned to Judge Andrews as related cases, and there is
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`only the one other case against the Mylan Defendants in West Virginia, there are effectivelyjust
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`two actions at issue here — the related actions involving all 14 defendants, including the Mylan
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`Defendants, in Delaware and the West Virginia action involving the Mylan Defendants. The
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`Panel has declined to centralize in similar circumstances, such as where “[o]n1y three actions are
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`involved." In re EH Liiiy, 446 F. Supp. at 243. Anacor has made no attempt to explain how or
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`why any “common factual questions are sufficiently complex“ nor why centralizing essentially
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`two actions would result in substantial efficiencies, such that creation ofa multi-district litigation
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`is appropriate.
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`Id. at 244 (citing In re Search Whiskey, 299 F. Supp. 543, 544 (J.P.M.L. 1969)).
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`

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`CONCLUSION
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`For the foregoing reasons, the Mylan Defendants respectfully requests that the Panel
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`deny Anacor’s Motion to Transfer the West Virginia Action to Delaware.
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`Dated: February 4, 2019
`
`WILSON, SONSINI, GOODRICH & ROSATI
`
`Respectfully submitted,
`
`By: /5/: TO‘Kong
`T.O. Kong
`One Market Plaza
`
`Spear Tower, Suite 3300
`San Francisco, CA 94105
`
`(415) 9412000
`Tel:
`Fax: (415) 947-2099
`tkong@wsgr.eom
`
`Attorneys for Defendants Mylar: Pharmaceuticals Inc. and
`Mylar? Inc.
`
`-10-
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`