IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

BRISTOL-MYERS SQUIBB CO.,

E.R. SQUIBB & SONS L.L.C.,
ONO PHARMACEUTICAL CO., LTD.,
and TASUKU HONJO,
Plaintiffs,
V.

MERCK & CO., INC., and

MERCK SHARP & DOHME CORP.
Defendants.

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C.A. No. 14-1131-GMS

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ORDER

WHEREAS, on November 21, 2014, the plaintiffs, Bristol-Myers Squibb Co., E.R.
Squibb & Sons L.L.C., Ono Pharmaceuticals Co., Ltd., and Tashuku Honjo (collectively,
"BMS"), filed an Amended Complaint against the defendants, Merck & Co., Inc. and Merck
Sharp & Dohme Corp. ("Merck") alleging infringement of U.S. Patent No. 8,728,474 ("the '474
Patent") (D.I. 24) and, on December 8, 2014, Merck filed its Answer to the Amended Complaint
(D.I. 31 );
WHEREAS, on October 28, 2014, Merck filed a Motion to Transfer to the District of
New Jersey (D.I. 11) and its accompanying Opening Brief in Support (D.I. 12);
WHEREAS, on November 17, 2014, BMS filed its Answering Brief in Opposition to
Merck's Motion to Transfer (D.I. 19) and, on December 3, 2014, Merck filed its Reply (D.I. 26);

WHEREAS, the court, having considered the instant motion, the response and reply
thereto, and the applicable law, concludes that Merck has not demonstrated that a transfer of the
above captioned matter to the District of New Jersey is appropriate in this case; 1

1
When faced with a defendant's motion to transfer venue pursuant to 28 U.S.C. 1404(a), the Third
Circuit's decision in Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) is instructive. In re Link-A-Media
Devices Corp., 662 F.3d 1221, 1222-23 (Fed. Cir. 2011) ("In reviewing a district court's ruling on a motion to
transfer pursuant to 1404(a), we apply the law of the regional circuit .... "). "[C]ourts confronting a motion to
transfer first ask whether the action could have been brought in the proposed transferee venue and then determine
whether transfer to a different forum would best serve the interests of justice and convenience." Smart Audio Tech.,
LLC v. Apple, Inc., 910 F. Supp. 2d 718, 725 (D. Del. 2012). "With regard to the second step of this inquiry,
Jumara instructed district courts look to the various private and public interests protected by 1404 rather than to
any 'definitive formula."' Id. (citing Jumara, 55 F.3d at 879). The court turns to the Jumara analysis because
neither party argues the case could not have been filed in the District of New Jersey.
Private factors discussed in Jumara include: (1) "plaintiffs forum preference as manifested in the original
choice," (2) "the defendant's preference," (3) "whether the claim arose elsewhere," (4) "the convenience of the
parties as indicated by their relative physical and financial condition," (5) "the convenience of the witnesses-but
only to the extent that the witnesses may actually be unavailable for trial in one of the fora," and (6) "the location of
books and records (similarly limited to the extent that the files could not be produced in the alternative forum)." 55
F.3d at 879.
In this case, a number of private factors weigh against granting Merck's motion to transfer. First, with
regard to plaintiffs forum preference this factor weighs against transfer because BMS decided to file suit in the
District of Delaware. While not dispositive, the court places significance on the plaintiffs choice of forum
particularly where, as here, the plaintiff is organized under the laws of Delaware and both parties have a global
reach. Second, as evidenced by the instant motion, Merck prefers to litigate this patent infringement suit in the
District of New Jersey. (DJ. 11.) Consequently, this factor weighs slightly in favor of transfer. Jumara, 55 F.3d at
879. The third Jumara private interest factor asks "whether the claim arose elsewhere." Id. at 879. "Patent
infringement arises whenever someone has committed acts of infringement, to wit, 'makes, uses, offers to sell, or
sells any patent invention' without authority." Cellectis S.A. v. Precision Biosciences, Inc., 858 F. Supp. 2d 376,
381 (D. Del. 2012) (quoting 35 U.S.C. 27l(a)). Therefore, this factor focuses on the activity surrounding the
production, design and manufacture of the alleged infringing product. McRo Inc. v. Activision Blizzard, Inc., No.
12-cv-1508-LPS-CJB, 2013 WL 6571618, at *5 (D. Del. Dec. 13, 2013), report and recommendation adopted, 2013
WL 6869866 (Dec. 30, 2013). In this case, BMS has filed a declaratory judgment action in order to prevent future
marketing of pembrolizumab, hence the drug has not reached Delaware's market. Rather, the alleged infringing
activity pertains to "business activity and decisions made by Merck in New Jersey." (DJ. 12 at 11.) Consequently,
this factor weighs in favor of granting the transfer motion. The fourth factor requires that the court consider "the
convenience of the parties as indicated by their relative physical and financial condition." Jumara, 55 F.3d at 879.
In this case, Merck is a corporation with global reach and annual revenues in the billions. The court concludes
litigating in Delaware will not impose an undue financial burden on Merck. See Graphics Prop. Holdings Inc. v.
Asus Computer International, Inc., 964 F. Supp. 2d 320 (D. Del. 2013). As such, this factor weighs against transfer.
Next, the court considers "the convenience of the witnesses-but only to the extent that the witnesses may actually
be unavailable for trial in one of the fora." Jumara, 55 F.3d at 879. Merck has not persuaded the court that any
witnesses will be unavailable to testify in the District of Delaware. Merck proffered a laundry list of its own
employees but "witnesses employed by the parties are not considered by a court conducting venue transfer analysis
because the parties are obligated to procure the presence of their own employees at trial." Nilssen v. Everbrite, Inc.,
No. OO-cv-189-JJF, 2001 WL 34368396, at *2 (D. Del. Feb. 16, 2001). Moreover, the court finds Merck's
discussion regarding Dr. Iwai's research colleagues at Rockefeller University to be speculative. (DJ. 12 at 8; DJ.
19 at 16-17.) As such, this factor weighs against transfer. Sixth, with regards to the location of books and records,
Merck has not met its burden to show such materials could be produced in New Jersey and not Delaware. Indeed,
"[w]ith new technologies for storing and transmitting information, the burden of gathering and transmitting
documents 3,000 miles is probably not significantly more than it is to transport them 30 miles." Graphics Prop.,

IT IS HEREBY ORDERED that:

1. Merck's Motion to Transfer Venue to the District of New Jersey (D.I. 11) is DENIED.

Dated: April

1.9{ , 2014

964 F. Supp. 2d at 330 (quoting ADE Corp. v. KLA-Tencor Corp., 138 F. Supp. 2d 565, 571 (D. Del. 2001)). This
factor weighs against transfer.
A review of the public interest factors likewise indicate transfer is not warranted in this instance. Public
interest factors include: (I) "the enforceability of the judgment," (2) "practical considerations that could make the
trial easy, expeditious, or inexpensive," (3) "the relative administrative difficulty in the two fora resulting from court
congestion," (4) "the local interest in deciding local controversies at home," and (5) "the familiarity of the trial judge
with the applicable state law in diversity cases." Jumara, 55 F.3d at 879-80.
First, there is no suggestion by either party that a judgment of infringement would be unenforceable in
either District. This factor is neutral. Second, as to the "practical considerations that could make the trial easy,
expeditious, or inexpensive," Id. at 879, the court rejects Merck's argument that "given the relative proximity of the
parties, witnesses and evidence to the District of New Jersey, transfer to New Jersey would make the trial easier and
less expensive.' (D.I. 12 at 15.) This factor weighs against transfer. Third, with regard to "the relative
administrative difficulty in the two fora resulting from court congestion," the court recognizes that judges in the
District of Delaware oversee complex dockets with numerous patent cases. But this reality is not an outright
determinative factor of whether or not to grant transfer motions. The court is slightly persuaded by those statistics
offered by BMS showing the time from filing to a patent trial in the District of New Jersey is more than in the
District of Delaware. (D.I. 19 at 19.) Although time-to-trial statistics are somewhat speculative due to the inherent
unpredictability in patent litigation, the court nonetheless weighs this slightly in favor of denying transfer. See
Endeavor MeshTech, Inc. v. Aclara Tech. LLC, No. 13-cv-1618-GMS, 2015 WK 849211, at *6 (D. Del. Feb. 25,
2015). Fourth, as to the "local interest in deciding local controversies at home," Jumara, 55 F.3d at 879, "[i]n patent
litigation, the local interest factor is typically neutral, because patent issues do not give rise to a local controversy or
implicate local interests." Graphics Prop. Holdings, 964 F. Supp. 2d at 330 (internal quotation and further citation
omitted). Finally, the fifth factor considers "the familiarity of the trial judge with the applicable state law in
diversity cases." Jumara, 55 F.3d 879-80. The instant lawsuit deals with infringement arising under the Patent
Act-a federal statute. Consequently, this factor is neutral.
In summary, the court finds the Jumara public and private interest factors weigh against granting Merck's
motion to transfer venue to the District of New Jersey.