Miscellaneous Docket No. 915 IN RE PFIZER INC., PFIZER IRELAND PHARMACEUTICALS,… v. Apotex Inc

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# United States Court of Appeals for the Federal Circuit

Miscellaneous Docket No. 915

IN RE PFIZER INC., PFIZER IRELAND PHARMACEUTICALS,
WARNER-LAMBERT COMPANY, and
WARNER-LAMBERT COMPANY LLC,

Petitioners.

On Petition for Writ of Mandamus to the United States District Court for
the District of Delaware in case no. 08-CV-0948,
Judge Legrome D. Davis.

ON PETITION FOR WRIT OF MANDAMUS

Before MAYER, BRYSON, and DYK, Circuit Judges.
DYK, Circuit Judge.

## ORDER

Pfizer Inc. et al. (Pfizer) petition for a writ of mandamus directing the United
States District Court for the District of Delaware to (1) vacate its order transferring this
case to the United States District Court for the Northern District of Illinois and (2) deny
Apotex Inc. and Apotex Corp.'s (Apotex) motion to transfer. Apotex opposes. Apotex
submits a citation of supplemental authority. Pfizer responds.

Pfizer brought suit in the Delaware District Court against Apotex based on
Apotex's filing of an Abbreviated New Drug Application seeking approval from the Food
and Drug Administration to manufacture, use, or sell atorvastatin calcium tablets, a
generic version of Pfizer's Lipitor tablets. On the same day, Pfizer also filed an identical
suit against Apotex in the Illinois District Court. Apotex moved to dismiss the Delaware
action due to, inter alia, lack of personal jurisdiction. Alternatively, Apotex moved to
transfer the case pursuant to 28 U.S.C. § 1404(a) to the Illinois District Court. The

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Delaware District Court granted the motion to transfer. The Delaware District Court
ruled that although the plaintiff's choice of forum is generally entitled to paramount
consideration, in this case the plaintiff chose both fora. Furthermore, the Delaware
District Court ruled that the "first-filed" rule did not apply in this case because "it would
be inappropriate to allow a plaintiff to file identical actions in different courts and then
pick the court in which it wishes to proceed." Pfizer Inc. v. Apotex Inc., Order Granting
Mot. to Transfer at *5-6, No. 08-CV-00948 (D. Del. Aug. 13, 2009) (citation omitted).
The Delaware District Court ruled that judicial economy and the interest of justice
favored transfer because transferring the case "would obviate a substantial question
regarding personal jurisdiction." Id. at *7. The Delaware District Court stated that
"substantial, unresolved questions remain with regard to whether this District has
personal jurisdiction over Defendant Apotex Inc. ... . We would not exercise jurisdiction
over Defendant Apotex Inc. without jurisdictional discovery." Id. at *8. For these
reasons, the Delaware District Court transferred the case to the Illinois District Court.

The writ of mandamus is available in extraordinary situations to correct a clear
abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461,
464 (Fed. Cir. 1998). A party seeking a writ bears the burden of proving that it has no
other means of obtaining the relief desired, Mallard v. U.S. Dist. Ct. for S. Dist. of lowa,
490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and
indisputable," Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). Because this
petition does not involve substantive issues of patent law, this court applies the law of
the regional circuit in which the district court sits, in this case the Third Circuit. Storage
Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 836 (Fed. Cir. 2003).

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Pfizer seeks a writ of mandamus directing the Delaware District Court to vacate
its transfer order and deny the motion to transfer. Pfizer raises three arguments in
support of its petition. First, Pfizer argues that the Delaware District Court clearly erred
by affording no weight to the plaintiff's "true" choice of forum. Apotex responds that in
this case, Pfizer willingly chose to proceed in both fora and thus the Delaware District
Court did not disregard Pfizer's choice of forum. Although Pfizer contends that it did not
willingly choose to file suit in the Illinois District Court, the court determines that Pfizer
has not shown that the Delaware District Court clearly abused its discretion in ruling that
Pfizer chose to file in both fora.

Second, Pfizer argues that the Delaware District Court erred by disregarding the
first-filed rule. Apotex counters that other courts in the Third Circuit have refused to
apply the first-filed rule in circumstances similar to this case, where identical suits are
filed in different districts on the same day. See Adams Respiratory Therapeutics, Inc. v.
Pharm. Holdings Corp., No. 2:06-CV-04418, Order Denying Pl.'s Mot. to Stay, at *2
(E.D. Pa. Nov. 2, 2006) (ruling that "first-filed" rule did not apply in action where plaintiff
filed nearly identical complaint in another court two days earlier). Pfizer cites no case in
which a court has applied the first-filed rule in these circumstances, instead generally
arguing that the Third Circuit follows the first-filed rule. The court determines that Pfizer
has not shown that the Delaware District Court clearly abused its discretion in ruling that
the first-filed rule was inapplicable under the circumstances of this case.

Third, Pfizer argues that the Delaware District Court erred in ruling that obviating
an unresolved jurisdictional dispute is a sufficient basis for transferring a case. Apotex
responds that other courts, including a district court in the Third Circuit, have held that
judicial economy is served if transfer would obviate a question of personal jurisdiction.

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See Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 77 F. Supp. 2d 505, 512 (D.
Del. 1999) (noting that transfer would obviate substantial dispute concerning whether
transferor district court could exercise personal jurisdiction over defendant and ruling
that judicial economy and interests of justice would be served by transferring case). In
this case, the Delaware District Court ruled that "substantial, unresolved questions
remain with regard to whether this District has personal jurisdiction over Defendant
Apotex Inc." and stated that it would not exercise jurisdiction over Apotex Inc. without
jurisdictional discovery. Under these circumstances, we cannot say that the Delaware
District Court clearly abused its discretion in ruling that judicial economy and the interest
of justice weighed strongly in favor of transfer.

Pfizer has not shown a clear and indisputable right to issuance of a writ of
mandamus. Thus, the petition is denied.

Accordingly,
IT IS ORDERED THAT:

The petition is denied.

FOR THE COURT

FEB 0 2 2010

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc:

Rudolf E. Hutz, Esq.

William A. Rakoczy, Esq.

Judge, USDC D. Del.

Clerk, USDC D. Del.

s17

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
FEB 02 2010

JAN HORBALY
CLERK

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