Merck Sharp & Dohme Corp. v. Teva Pharmaceuticals USA, Inc. C.A. No. 14-874 – SLR- SRF, July 1, 2015

Fallon, M. J. Report and Recommendation that defendant’s motion to transfer be denied; that defendant’s motion to dismiss count II (contributory infringement) with leave to amend be granted; and defendant’s motion for judgment on the pleadings be denied as moot.

Defendant moved to transfer this ANDA case to New Jersey, where in a related case against another ANDA filer the court found no infringement of the asserted claims. Plaintiff’s choice of the Delaware forum weighs against transfer, but is afforded less than paramount or substantial weight if Delaware were the plaintiff’s home forum.  The New Judge’s familiarity with anhydrous mometasone furoate  does not warrant transfer to New Jersey on the basis of judicial economy. Defendant has not established that litigating in Delaware would be burdensome. The complaint is facially deficient because it fails to plead materiality and should be dismissed.  Defendant argues that the complaint does not contain facts creating a plausible inference that the anhydrous mometasone furoate contained in defendant’s accused product will convert to mometasone furoate monohydrate over the course of its shelf life.  The court finds that the allegation in the complaint that “during the proposed shelf life of the product, such activities would result in the sale and/or use of an infringing article is sufficient despite the lack of express reference to plaintiff’s conversion theory.  Defendant argued that the use of its accused product prior to any conversion would constitute a substantial non-infringing use; however, the magistrate found the allegation of the absence of substantial non-infringing uses to be adequate. The accused form of defendant’s product is likewise adequately pled.  The Magistrate recommends that the court grant leave to amend the complaint to allege materiality. Because the court cannot at this stage make factual findings as to the form of the accused product is accepts plaintiff’s allegations as true and recommends denying the motion for judgment on the pleadings.