IN THE UNITED STATES DISTRICT COURT FOR

THE DISTRICT OF DELAWARE

VANDA PHARMACEUTICALS INC.,

Plaintiff,
v.

)
)
)
)
C.A. No. 15-362-GMS

INVENTIA HEALTHCARE PVT. LTD.,

)
)

Defendant.

ORDER
WHEREAS, on May 5, 2015, the plaintiff Vanda Pharmaceuticals Inc. ("Vanda") brought
this action for infringement of U.S. Patent No. 8,586,610 (the '"610 Patent") and declaratory
judgment against defendant Inventia Healthcare Pvt. Ltd. ("Inventia") (D.I. 1);
WHEREAS, presently before the comi is Inventia's motion to dismiss or transfer filed
on June 29, 2015 (D.I. 7). Inventia argues that (1) there is no basis for the court to exercise
personal jurisdiction over Inventia under the Delaware Long-Arm Statute, (D.I. 8. at 4--5), (2)
there is no basis for the court to exercise personal jurisdiction based upon Federal Rule of
Civil Procedure 4(k)(2), id. at 9-10, and (3) exercising personal jurisdiction over Inventia
would violate the Due Process Clause. Id. at 5-9. In the alternative, Inventia argues that the
case should be transferred to the Northern District of West Virginia. Id. at 10.
WHEREAS, in response, Vanda argues that (1) the court has personal jurisdiction over
Inventia under the Delaware Long-Arm Statute by filing an ANDA application and under the

dual jurisdiction theory, (D.I. 12 at 14-16), (2) the court has personal jurisdiction over Inventia
under the Federal Long-Arm Statute, id. at 16-18, and (3) the court has personal jurisdiction
over Inventia under the Federal Due Process Clause. Id. at 7-14. In addition, Vanda asserts that
there is no basis to transfer this case to West Virginia. Id. at 18-20.
The court finds that Inventia has alleged sufficient facts to establish personal jurisdiction.
Specific jurisdiction exists where "the defendant has 'purposefully directed' his activities at
residents of the forum, and the litigation results from alleged injuries that 'arise out of or relate
to' those activities." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472-73 (1985); see also
Nuance Commc 'ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1231 (Fed. Cir. 2010) (citing
Akra Corp. v. Luker, 45 F.3d 1541, 1545-46 (Fed. Cir. 1995)). This court has held that the act
of filing an ANDA application that potentially infringes the patent of a Delaware entity provides
sufficient minimum contacts with the state of Delaware under a specific jurisdiction analysis.
AstraZeneca AB v. Mylan Pharm., Inc., 72 F. Supp. 3d 549, 559-60 (D. Del. 2014) motion to
certify appeal granted sub nom. Astrazeneca AB v. Aurobindo Pharma Ltd., No. CV 14-664GMS, 2014 WL 7533913 (D. Del. Dec. 17, 2014).
Here, Inventia filed an ANDA application to make generic iloperidone and certified that
it would not wait until the '610 Patent expires. Even though Inventia did not send a Paragraph
IV certification to Vanda in Delaware, as this court emphasized in AstraZeneca, jurisdiction
arises from the act of filing an ANDA application, triggering the patent holder's forty-five days
to initiate a lawsuit. Id. at *7. Having found that specific jurisdiction exists under the Delaware
Long-Arm Statute, the court will not address Vanda's dual jurisdiction argument and concludes
that it need not rely on a Federal statutory basis for jurisdiction. See Synthes (US.A.) v. G.M
Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285, 1295-96 (2009) (citing advisory

committee notes to the 1993 amendment establishing Rule 4(k)(2)) (explaining that Rule 4(k)(2)
was adopted to provide a forum for federal claims in situations where a foreign defendant lacks
substantial contacts with any single state).
Furthermore, the court finds that the exercise of jurisdiction does not violate the Federal
Due Process Clause. The court's exercise of jurisdiction must comport with "traditional notions
of fair play and substantial justice." Int'l Shoe Co. v. State of Wash., Office of Unemployment
Comp. & Placement, 326 U.S. 310, 316 (1945) (citing Milliken v. Meyer, 311U.S.457, 463
(1940)). Vanda would be substantially burdened if forced to bring a lawsuit against any ANDA
filer challenging the '610 patent in the location selected by the defendant. AstraZeneca AB, 72
F. Supp. 3d 549 at 560. Thus, considerations of fair play and substantial justice also justify the
exercise of jurisdiction.
Inventia alternatively moves for a transfer of this action to the Northern District of West
Virginia. The statutory authority for transferring venue is 1404(a) of Title 28, which provides:
"For the convenience of parties and witnesses, in the interest of justice, a district court may
transfer any civil action to any other district or division where it might have been brought." 28
U.S.C. 1404(a). Courts in the Third Circuit apply the public and private interest factors
outlined in Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995).
With regard to the private interests, courts consider: (1) the plaintiff's choice of forum; (2)
the defendant's preferred forum; (3) where the claim arose; (4) the convenience of the
parties; (5) the convenience of the witnesses, but only to the extent that the witnesses may
be unavailable for trial in one of the fora; and (6) the location of books and records, but
again, only to the extent that they may be unavailable in one of the fora. With regard to the
public interests, courts consider: (1) the enforceability of the judgment; (2) practical
considerations that could make the trial easier, quicker, or less expensive; (3) court
congestion; (4) local interest in the controversy; (5) public policies of the fora; and (6) the
trial judge's familiarity with the applicable state law.

Pfizer Inc. v. Apotex, Inc., No. CIV.A. 08-CV-00948LD, 2009 WL 2843288, at *2 (D. Del. Aug.
13, 2009) (citing Jumara, 55 F.3d at 878-79). The burden of establishing the basis for transfer is
the movant's. Jumara, 55 F.3d at 879.
The first factor is neutral here. Vanda brought suits in this District and in the Northern
District of West Virginia. Vanda contends that the forum where they filed first should control.
However, it is this court's view that the "first-filed" rule does not apply where the plaintiff
brought identical suits to both districts. See Pfizer Inc. v. Apotex, Inc., No. CIV.A. 08-CV00948LD, 2009 WL 2843288, at *3-4 (D. Del. Aug. 13, 2009). The second factor, the
defendant's preferred forum, weighs in favor of transfer. Because Vanda was injured in Delaware,
the third factor weighs against transfer. Convenience also weighs against transfer. While neither
entity maintains a principal place of business in Delaware, Vanda is already involved in litigation
regarding the '610 in this district. As a result, the witnesses are available here. Inventia fails to
demonstrate that the Northern District of Western Virginia is a more convenient location. Thus,
the court finds that the private interest factors weigh in favor of Delaware.
In terms of the public interest, since this action is a patent infringement case, local
interests are not implicated. See Magsil Corp. v. Seagate Tech., No. 08-940, 2009 WL 1259043,
at *2 (D. Del. Apr. 30, 2009). However, practical considerations weigh heavily against
transfer. A related case is currently being heard here involving the same patent and drug. See

Vanda Pharmaceuticals, et al. v. Roxane Laboratories Inc., C.A. No. 13-1973 (GMS). Thus, it
would be easier, quicker, and less expensive to hear both cases here. Moreover, resolution of the
issues relating to the '610 patent in a single district would promote judicial economy and avoid
the possibility of inconsistent outcomes. Inventia fails to demonstrate a basis for transfer that
outweighs these interests.

In sum, it is the court's view that Inventia is subject to specific jurisdiction in Delaware.
Vanda's cause of action arises out oflnventia's activities, which were purposefully directed at
Vanda in the state of Delaware. Principles of due process support this conclusion. For the
reasons discussed previously, the Jumara factors weigh against transfer of this case.
THEREFORE, IT IS HEREBY ORDERED THAT Inventia's Motion to Dismiss
the Complaint for Lack of Personal Jurisdiction or in the Alternative Motion to Transfer (D.I.
7) is DENIED.

Dated: September

f 1-, 2015